A sweet tooth turns sour

30th Nov 2020

Rebecca Anderson-Smith captures the action at our recent mock CMC and hearing.

Happily, the COVID-19 pandemic has not deterred CITMA from offering a diverse range of events over the past few months. The mock case management conference (CMC) and hearing on 29th September was testament to what can be achieved with live streaming and perhaps even offered a glimpse of how we might find ourselves conducting UK IPO proceedings in the future.

Participants were able to witness and compare the different approaches taken by Chartered Trade Mark Attorney Patricia Collis and Barrister Charlotte Blythe in an inter partes relative grounds opposition, as well picking up some tips from experienced Hearing Officers Mark King and Heather Harrison.

The scenario

In the fictional scenario presented, the Opponent was Busy Ltd, which had run a small café in the centre of Nottingham called BUSY for more than 15 years. The owners had recently been discussing the possibility of starting to produce their own products, especially cakes. They conducted a poll of some of their regulars on the name BUSY BAKER, offering the chance to win a free lunch as an incentive.

A trade mark search disclosed a recently filed UK trade mark application for BUSY BAKER covering “cakes; chocolates; chocolate sculptures” in class 30, plus related mail-order services in class 35. Busy Ltd filed an opposition, relying on s5(2)(b) of the Trade Marks Act 1994, claiming likelihood of confusion with its UK trade mark registration for BUSY, covering “café services” in class 43.

After filing the opposition, Busy Ltd selected a winner for its poll at random and realised that it was the Applicant behind the BUSY BAKER application, Andrew Baker. In addition to participating in the poll, he had been a regular visitor to the café. A keen baker, Mr Baker had been considering starting up a bespoke cake business. He had filed his trade mark application a week after he submitted his response to the café poll. Busy Ltd then made an application to amend its opposition, introducing s3(6): bad faith.

The CMC

Heather Harrison presided over a CMC to decide if the new ground of opposition under s3(6) should be admitted. On behalf of the Opponent, Charlotte Blythe argued that introducing the ground now would avoid duplication of proceedings and save all concerned the further costs and time that would be incurred if the Opponent were required to bring a separate application for invalidity at a later stage. She stressed that there would be no prejudice to the Applicant as the application to introduce the ground had been made at an early stage and before any evidence had been filed by either side.

Patricia Collis, acting for the Applicant, countered with an argument that the Applicant should not be unduly prejudiced because of the Opponent’s failure to conduct thorough due diligence. She submitted that, had the Opponent researched the identity of the Applicant prior to filing the opposition, or attempted to contact him, the connection to the café would have been discovered. She further argued that introducing bad faith as a ground of opposition would require the Applicant to submit evidence, placing more of a burden on him, particularly in terms of cost.

Harrison concluded that any prejudice to the Applicant in terms of cost could be compensated with an award of costs. She therefore allowed the amendment to introduce an additional bad faith ground.

The hearing

In the mock hearing, presided over by Mark King, particular points of focus in Charlotte Blythe’s submissions for the Opponent concerned the nature of chocolate sculptures and the degree of attention of the average consumer when purchasing them. She argued that, while this term could concern an elaborate item produced for a special event, it
could also encompass a small chocolate bunny sold in a normal shop or café at Easter.

In her discussion of the bad faith ground, Blythe drew attention to the summary of the facts of the case presented in the skeleton argument and then made several submissions based on these facts. She argued that the Applicant’s claim to have independently come up with the name BUSY BAKER was not plausible, and even if true would not exonerate him as he would have known that any BUSY mark in this context would cause confusion.

In her submissions for the Applicant, Patricia Collis began by discussing the marks. She argued that there is a conceptual difference between BUSY and BUSY BAKER, with BUSY evoking the abstract concept of being busy, and the grammatical structure of BUSY BAKER creating an image of a specific person who is busy.

Moving on to the goods and services, Collis admitted that you can buy cakes in a café but denied the claim that all the goods and services are similar. Chocolate sculptures and mail-order services were the two areas of greatest contention, with Collis arguing that these are in fact dissimilar to café services, as the aim of a café is to provide quick refreshment, whereas a consumer purchasing a chocolate sculpture or choosing a mail-order service is likely to have carefully considered their purchase in advance.

Regarding bad faith, Collis submitted that this was a simple case of two parties choosing the same name and that it would be wrong to jump to any conclusions about the timing of the application filing. Seeing others potentially being interested in BUSY BAKER had simply prompted the Applicant to act on his own plans. She further argued that there was no evidence of any plan to take advantage of the Opponent or disrupt its business.

Delivering his verdict on the day, King concluded that he would reject the claim of likelihood of confusion but uphold the opposition on the grounds of bad faith.

Skeleton arguments: Dos and Don’ts

Over the course of the event, the Hearing Officers set out some of their best-practice tips.

Do:

Make sure the content is in line with what has been pleaded in the opposition;
Clearly identify the key turning points in the case and focus on them;
Follow the structure and order used in UK IPO decisions, if possible;
Include a clear comparison of the goods and services, for example by grouping into categories or displaying them in a table;
Be precise with any references to evidence, directing the Hearing Officer to where the items can be found in the bundle;
Include full case references when referring to case law;
Make concessions where appropriate;
File on time!

Don’t:

Adopt a “silly position” or try to deny the obvious;
Include detailed discussion or recite passages from the best-known case law, such as the authorities listed by the UK IPO when inviting you to a hearing;
Let your skeleton become unnecessarily long or repeat large sections of argument included in submissions during the evidence rounds.