TSBUK - O-301-21 TRADE MARKS ACT 1994 IN THE MATTER OF: TRADE MARK REGISTRATION No. 3390736
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O-301-21
TRADE MARKS ACT 1994
IN THE MATTER OF:
TRADE MARK REGISTRATION No. 3390736
IN THE NAME OF STEVEN NELSON:
TSBUK
IN CLASSES 1, 9, 35 & 41
AND
AN APPLICATION FOR INVALIDATION
(UNDER No 502991)
BY TSB BANK PLCBackground and pleadings
1. The details of the mark the subject of these invalidation proceedings are:
Mark: TSBUK
Filing date: 9 April 2019
Publication date: 19 April 2019
Registration date: 28 June 2019
Owner: Steven Nelson
Specifications:
Class 1: Media for recording visual images [sensitised films]; Media for use in
chromatography [not medical]; Media for use in offset lithographic printing.
Class 9: Media Content.
Class 35: Online advertising network matching services for connecting
advertisers to websites; Online advertising on a computer network; Online
advertising on computer networks; Online advertising services; Online
advertising via a computer communications network; Advertising the goods and
services of online vendors via a searchable online guide; Dissemination of
advertising matter online; Dissemination of advertising via online
communications networks; Online advertising; Providing a searchable online
advertising guide featuring the goods and services of online vendors; Providing
a searchable online advertising guide featuring the goods and services of other
on-line vendors on the internet; Providing searchable online advertising guides.
Class 41: Entertainment agency services; Entertainment booking services;
Entertainment byIP-TV; Entertainment by film; Entertainment by means of
Page 2 of 43concerts; Entertainment by means of radio; Entertainment by means of
roadshows; Entertainment by means of wireless television broadcasts;
Entertainment in the form of live musical performances (Services providing -);
Entertainment in the form of recorded music (Services providing -);
Entertainment in the form of television programmes (Services providing -).
2. TSB Bank Plc (“TSB”) seeks the invalidation of Mr Nelson’s registration. Its grounds
for doing so are based on sections 5(1), 5(2)(a), 5(2)(b), 5(3), 5(4)(a) and 3(6) of the
Trade Marks Act 1994 (“the Act”) 1. Numerous marks and signs are relied on under the
first five of these grounds; I will detail them further in the relevant parts of this decision.
Under section 3(6), the claim is based, essentially, on the claimed knowledge on the
part of Mr Nelson of TSB’s marks/signs, its goodwill/reputation, and, consequently,
that Mr Nelson’s mark was filed to block TSB’s use of, and freedom to register, its
earlier rights/marks, and to benefit financially from TSB’s goodwill and reputation.
3. Mr Nelson filed a counterstatement denying these grounds. In particular, he states
that:
• No unfair advantage has been gained as he is not providing banking services.
• The public has not been misled because TSBUK is an acronym for “the
streetblogsuk”.
• There is no confusion because he offers entertainment via social media
platforms, and, further, that the logos of the respective parties differ.
• His trade mark was filed in good faith; he also notes that TSB had two months
to challenge the mark before registration, but it did not do so 2.
1All of these grounds are applicable in invalidation proceedings given the provisions of section 47(1)
and (2) of the Act.
2 Given what I have said in the previous footnote, the fact that TSB did not oppose Mr Nelson’s mark
during the opposition period does not disentitle TSB to apply for invalidation. It can make its application
for invalidation under the identified grounds and to have those grounds determined on their merits. I will
say no more about this part of Mr Nelson’s defence.
Page 3 of 434. TSB filed evidence, accompanied by a set of written submissions. Mr Nelson filed
neither evidence nor submissions. Neither side requested a hearing nor did they file
written submissions in lieu of a hearing. TSB is represented by Lawrie IP Limited, Mr
Nelson has represented himself.
The evidence
5. TSB’s evidence is given by way of witness statement, the witness being Mr Keith
Gulliver, its Head of Brand, Content and Social Media. A number of things are clear
from Mr Gulliver’s evidence:
• TSB was once part of the Lloyds TSB Group (known as LLOYDS TSB), but the
group split in 2013.
• There has been considerable use of TSB since 2013. It is clear from the
evidence that TSB is a well-known mark in the financial services sector.
• The significance of TSB’s use can be seen in evidence relating to the hits on
its “.co.uk” website (over 7 million visits per month), extremely significant
expenditure on advertising and promotion in the UK, and an annual turnover of
over £326 million.
• TSB has just under 55k followers on Twitter. There are over 100 videos on its
YouTube channel, with total viewership over 13 million.
• The TSB mark has been advertised in traditional magazine and newspaper
media, as well as on social media platforms such as Twitter, LinkedIn,
Instagram and Facebook.
• Sponsorship has also taken place, with Mr Gulliver particularly focusing on its
partnership with the Pride of Britain Awards, where TSB awards a “TSB
Community Partner Winner”. The ceremony is broadcast on ITV and attracts
around 5 million viewers.
Page 4 of 436. I will come back to the evidence in more detail, if, and when, it is necessary to do
so.
Sections 5(1) and 5(2)(a) of the Act
7. Section 5(1) of the Act prevents registration of marks which are:
“….identical with an earlier trade mark and the goods and services for which
the trade mark is applied for are identical with the goods or services for which
the earlier trade mark is protected.”
8. Section 5(2)(a) prevents registration of marks which are:
“…identical with an earlier trade mark and is to be registered for goods or
services similar to those for which the trade mark is protected...there exists a
likelihood of confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark”.
9. It is clear from the above provisions that TSB can only succeed under these
grounds if the earlier marks it relies on are identical to Mr Nelson’s mark. It is not,
though, necessary for the marks to be literally identical. In S.A. Société LTJ Diffusion
v. Sadas Vertbaudet SA, Case C-291/00, the Court of Justice of the European Union
(“CJEU”) 3 held that:
“54... a sign is identical with the trade mark where it reproduces, without any
modification or addition, all the elements constituting the trade mark or where,
viewed as a whole, it contains differences so insignificant that they may go
unnoticed by an average consumer.”
3 The parties will note that this is a decision of an EU Court and may wonder why this judgment is still
referred to despite the UK having left the EU. This is because although the UK has left the EU, section
6(3)(a) of the European (Withdrawal) Act 2018 requires tribunals to apply EU-derived national law in
accordance with EU law as it stood at the end of the transition period. The provisions of the Trade
Marks Act relied on in these proceedings are derived from an EU Directive. This is why this decision
continues to make reference to the trade mark case-law of EU courts.
Page 5 of 4310. I note that in Reed Executive plc v Reed Business Information Ltd, Court of Appeal
[2004] RPC 767, Jacob L.J. found that “Reed” was not identical to “Reed Business
Information” even for information services. He stated that:
“40. It was over “Reed Business Information” that battle was joined. The
composite is not the same as, for example, use of the word “Reed” in the
sentence: “Get business information from Reed”. In the latter case the only
“trade-marky” bit would be “Reed”. In the former, the name as a whole is “Reed
Business Information”. The use of capital letters is of some visual significance
– it conveys to the average user that “Business Information” is part of the name.
If the added words had been wholly and specifically descriptive – really adding
nothing at all (eg “Palmolive Soap” compared to “Palmolive”) the position might
have been different. But “Business Information” is not so descriptive – it is too
general for that.”
11. TSB rely on four earlier marks under sections 5(1) and 5(2)(a) as follows:
Mark number Representation of mark
UK registration 2627737 TSB
UK registration 2629130
EUTM 4 017363136
EUTM 017363151 TSB
12. All four of these marks have filing dates that predate Mr Nelson’s mark. The first
two of the above marks are subject to the proof of use provisions contained in section
47(2)(2A) of the Act as they were registered more than five years before the date on
which Mr Nelson made his application to register his mark, and more than five years
before TSB requested invalidation. The second two are not subject to the proof of use
4Although the UK has left the EU and the transition period has now expired, EUTMs, and International
Marks which have designated the EU for protection, are still relevant in these proceedings given the
impact of the transitional provisions of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019
– please see Tribunal Practice Notice 2/2020 for further information.
Page 6 of 43provisions as they are more recent registrations. However, nothing turns on this
because in his counterstatement Mr Nelson did not ask TSB to provide proof of use.
As a consequence, TSB is entitled to rely on these marks in relation to the goods and
services for which TSB made a statement of use.
13. Irrespective of the above, TSB need to clear the first hurdle, in that the marks
must be identical, in accordance with the case-law above.
14. In its submissions, TSB acknowledges that Mr Nelson’s mark contains the
additional element UK. However, it submits that this is non-distinctive and will be seen
as an indication that the owner of the mark/business is located in the UK, or the
goods/services are provided in the UK; it argues that the relevant public would
perceive the mark simply as TSB. TSB refers to the judgment of the CJEU in KID-
Systeme GmbH V Sky plc, case C577/19 P in support.
15. I accept that the relevant public (or at least a significant proportion of them) is
likely to see, and break down, TSBUK as TSB UK. This is because it is common for
people to look for meaning in something which they do not recognise as a word. When
reaching this finding, I have placed no weight on the judgment 5 mentioned in the
previous paragraph which related to the perception of the mark Skyfi (as Sky fi)
because each case must be determined on its merits. Neither is there anything in that
judgment which supports that a finding of identity must be made.
16. Whilst I have found it likely that the mark may be perceived as TSB UK, and whilst
I accept that UK is an inherently non-distinctive acronym indicating the United
Kingdom, it does not follow that the mark TSBUK is identical to TSB. This is because
I do not consider that the UK aspect will go unnoticed within the construct of Mr
Nelson’s mark. Further, the construction of the mark lends itself more to the Reed
Business Information example as opposed to the Palmolive Soap example given in
the Reed case. I come to the view that TSBUK is not identical to TSB’s word marks
comprising of the letters TSB. It follows that the earlier logo versions are similarly not
5
A judgment of the General Court which was not annulled by the CJEU.
Page 7 of 43identical, indeed, any claim to identity on the basis of those marks is strained to say
the least. The grounds of invalidity under sections 5(1) and 5(2)(a) are dismissed.
Section 5(2)(b) of the Act
17. Section 5(2)(b) of the Act states that:
“5.-(2) A trade mark shall not be registered if because ...
(b) it is similar to an earlier trade mark and is to be registered for goods or
services identical with or similar to those for which the earlier trade mark is
protected,
there exists a likelihood of confusion on the part of the public, which includes
the likelihood of association with the earlier trade mark.”
18. The following principles are gleaned from the judgments of the EU courts in Sabel
BV v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer
Inc, Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case
C-342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98,
Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson Multimedia
Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato & C. Sas v
OHIM, Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P:
(a) The likelihood of confusion must be appreciated globally, taking account of
all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the
goods or services in question, who is deemed to be reasonably well informed
and reasonably circumspect and observant, but who rarely has the chance to
make direct comparisons between marks and must instead rely upon the
imperfect picture of them he has kept in his mind, and whose attention varies
according to the category of goods or services in question;
Page 8 of 43(c) the average consumer normally perceives a mark as a whole and does not
proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be
assessed by reference to the overall impressions created by the marks bearing
in mind their distinctive and dominant components, but it is only when all other
components of a complex mark are negligible that it is permissible to make the
comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite
trade mark may be dominated by one or more of its components;
(f) however, it is also possible that in a particular case an element
corresponding to an earlier trade mark may retain an independent distinctive
role in a composite mark, without necessarily constituting a dominant element
of that mark;
(g) a lesser degree of similarity between the goods or services may be offset
by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly
distinctive character, either per se or because of the use that has been made
of it;
(i) mere association, in the strict sense that the later mark brings the earlier
mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of
confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks creates a risk that the public will
wrongly believe that the respective goods or services come from the same or
economically-linked undertakings, there is a likelihood of confusion.
Page 9 of 4319. Seven marks are relied on by TSB which, again, all predate Mr Nelson’s mark,
and, again, whilst some may notionally be subject to proof of use, no request for proof
of use was made. The earlier marks are:
Mark number Representation of mark
UK registration 2627737 TSB
UK registration 2629130
EUTM 017363136
EUTM 017363151 TSB
3198616 done TSB LOCAL PRIDE
UK 3369388 TSB WELCOME BACK TO LOCAL
BANKING
UK 3369402 TSB THE HOME OF LOCAL BANKING
20. As can be seen, the earlier marks have greater or lesser degrees of similarity to
Mr Nelson’s mark. I will start the analysis with the comparison of goods and services.
However, before doing so, it may be useful for the benefit of Mr Nelson (who is self-
represented) to make one point. In his counterstatement, Mr Nelson refers to TSB
being a bank and that, by way of contrast, he provides entertainment via social media.
Whilst I note Mr Nelson’s point, this does not reflect what the marks actually cover,
particularly bearing in mind that Mr Nelson did not request proof of use for the earlier
marks which are subject to those provisions. The assessment required of me is to
compare the goods and services for which Mr Nelson’s mark is registered, against the
goods and services of the earlier marks (or for which a statement of use/reliance has
been made). This is the prism through which goods/services similarity must be
assessed and the same prism must be used in considering whether there is a
likelihood of confusion.
Page 10 of 43Comparison of goods/services
21. When making the comparison, all relevant factors relating to the goods/services
in the specifications should be taken into account. In the judgment of the CJEU in
Canon, Case C-39/97, the court stated at paragraph 23 of its judgment that:
“In assessing the similarity of the goods or services concerned, as the French
and United Kingdom Governments and the Commission have pointed out, all
the relevant factors relating to those goods or services themselves should be
taken into account. Those factors include, inter alia, their nature, their
intended purpose and their method of use and whether they are in competition
with each other or are complementary.”
22. Guidance on this issue has also come from Jacob J. (as he then was) in the Treat
case, [1996] R.P.C. 281, where he identified the factors for assessing similarity as:
(a) The respective uses of the respective goods or services;
(b) The respective users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The respective trade channels through which the goods or services reach the
market;
(e) In the case of self-serve consumer items, where in practice they are
respectively found or likely to be found in supermarkets and, in particular,
whether they are or are likely to be found on the same or different shelves;
(f) The extent to which the respective goods or services are competitive. This
inquiry may take into account how those in trade classify goods, for instance,
whether market research companies, who of course act for industry, put the
goods or services in the same or different sectors.
Page 11 of 4323. In Kurt Hesse v OHIM, Case C-50/15 P, the CJEU stated that complementarity is
an autonomous criterion capable of being the sole basis for the existence of similarity
between goods. In Boston Scientific Ltd v Office for Harmonization in the Internal
Market (Trade Marks and Designs) (OHIM), Case T-325/06, the General Court (“GC”)
stated that “complementary” means:
“… there is a close connection between them, in the sense that one is
indispensable or important for the use of the other in such a way that customers
may think the responsibility for those goods lies with the same undertaking.”
24. In terms of interpreting terms in specifications, I note that in YouView TV Ltd v
Total Ltd, [2012] EWHC 3158 (Ch), Floyd J. (as he then was) stated:
“… Trade mark registrations should not be allowed such a liberal interpretation
that their limits become fuzzy and imprecise: see the observations of the CJEU
in Case C-307/10 The Chartered Institute of Patent Attorneys (Trademarks) (IP
TRANSLATOR) [2012] ETMR 42 at [47]-[49]. Nevertheless the principle should
not be taken too far. Treat was decided the way it was because the ordinary
and natural, or core, meaning of ‘dessert sauce’ did not include jam, or because
the ordinary and natural description of jam was not ‘a dessert sauce’. Each
involved a straining of the relevant language, which is incorrect. Where words
or phrases in their ordinary and natural meaning are apt to cover the category
of goods in question, there is equally no justification for straining the language
unnaturally so as to produce a narrow meaning which does not cover the goods
in question.”
25. And in Sky v Skykick [2020] EWHC 990 (Ch), Lord Justice Arnold set out the
following summary of the correct approach to interpreting broad and/or vague terms:
“…the applicable principles of interpretation are as follows:
(1) General terms are to be interpreted as covering the goods or services clearly
covered by the literal meaning of the terms, and not other goods or services.
Page 12 of 43(2) In the case of services, the terms used should not be interpreted widely, but
confined to the core of the possible meanings attributable to the terms.
(3) An unclear or imprecise term should be narrowly interpreted as extending
only to such goods or services as it clearly covers.
(4) A term which cannot be interpreted is to be disregarded.”
26. In Gérard Meric v Office for Harmonisation in the Internal Market, Case T- 133/05,
the GC stated that:
“29. In addition, the goods can be considered as identical when the goods
designated by the earlier mark are included in a more general category,
designated by trade mark application (Case T-388/00 Institut for Lernsysterne
v OHIM – Educational Services (ELS) [2002] ECR II-4301, paragraph 53) or
where the goods designated by the trade mark application are included in a
more general category designated by the earlier mark.”
Earlier marks 2627737 (TSB) & 2629130 ( )
27. Both earlier marks cover:
Class 16: Stationery; paper; printed matter; printed publications; books,
magazines and newsletters; brochures: credit cards; debit cards; charge cards,
cash cards; cheque books, travellers cheques, bankers' drafts and printed
cheques; educational and instructional material.
Class 35: Business appraisal; business management services; business
development services; business administration services; business consultancy
services; business information, enquiry, research and investigation services;
advertising services; business relocation services; business organisation
services; accounting and book-keeping services; economic forecasting and
analysis; personnel management, consultancy and recruitment services,
Page 13 of 43provision, hire and rental of office machinery; arranging and conducting of
exhibitions; organisation and preparation of payroll; promotion services;
telephone answering services.
Class 36: Banking and financial services, including deposit-taking and storage
of valuables; automated banking services; automated payment of accounts;
credit services; consumer, commercial and mortgage lending; current
accounts, savings and investment accounts, bank card, credit card, debit card,
charge card and cash card services; provision of banking services via the
telephone, the Internet and interactive television; money transmission; issue of
letters of credit and guarantees; foreign exchange services; issue of travellers
cheques and eurocheques; futures, forwards; electronic banking and funds
transfer services; money transfer services; electronic money transfer services;
financial leasing; financial planning, advice, research and report services; asset
and portfolio management; personal equity plans; tax and estate planning;
pensions services; executor and trustee services; investment funds and unit
trust services; hire-purchase financing; real estate financing; valuation,
investment and management services; insurance services; insurance
underwriting and broking; life assurance services.
28. TSB claim that the following of Mr Nelson’s services are identical or similar:
Class 35: Online advertising network matching services for connecting
advertisers to websites; Online advertising on a computer network; Online
advertising on computer networks; Online advertising services; Online
advertising via a computer communications network; Advertising the goods and
services of online vendors via a searchable online guide; Dissemination of
advertising matter online; Dissemination of advertising via online
communications networks; Online advertising; Providing a searchable online
advertising guide featuring the goods and services of online vendors; Providing
a searchable online advertising guide featuring the goods and services of other
on-line vendors on the internet; Providing searchable online advertising guides.
Page 14 of 43Class 41: Entertainment agency services; Entertainment booking services;
Entertainment by IP-TV; Entertainment by film; Entertainment by means of
concerts; Entertainment by means of radio; Entertainment by means of
roadshows; Entertainment by means of wireless television broadcasts;
Entertainment in the form of live musical performances (Services providing -);
Entertainment in the form of recorded music (Services providing -);
Entertainment in the form of television programmes (Services providing -).
29. Looking firstly at the class 35 services, it is noteworthy that the earlier marks cover
advertising services. There can, in my view, be little doubt that such a term is broad
enough to encompass at least the following of Mr Nelson’s services, and, therefore
bearing in mind the Meric case, are identical:
Online advertising on a computer network; Online advertising on computer
networks; Online advertising services; Online advertising via a computer
communications network; Advertising the goods and services of online vendors
via a searchable online guide; Online advertising;
30. In relation to the following of Mr Nelson’s services:
Online advertising network matching services for connecting advertisers to
websites; Providing a searchable online advertising guide featuring the goods
and services of online vendors; Providing a searchable online advertising guide
featuring the goods and services of other on-line vendors on the internet;
Providing searchable online advertising guides.
31. I similarly find that these are forms of advertising, even though they may not be
the first things that spring to mind. I therefore consider the services to be identical as
they fall within the ambit of the broad term advertising services. If they are not strictly
identical then they are, in my view, highly similar given the overlap in core purpose,
the methods of use, that they may in certain circumstances compete with traditional
forms of adverting, or may alternatively complement them in the way described by the
case-law – they are also likely to be offered through the same trade channels as
traditional advertising.
Page 15 of 4332. I find the same outcome (for similar reasons) in relation to:
Dissemination of advertising matter online; Dissemination of advertising via
online communications networks
as they are either identical (falling within advertising services) or else are highly similar.
33. Under these earlier marks, similarity is also claimed in relation to Mr Nelson’s
class 41 services. In its submissions, I note that TSB provides various tables
highlighting the claimed conflicts between certain types of goods and services, albeit,
not broken down per earlier mark. It is difficult to ascertain from this which of its
goods/services TSB specifically consider are similar to the various entertainment
services in Mr Nelson’s class 41 specification. There is, in my view, nothing obvious
that lends itself to such a finding. I therefore come to the view that there is no similarity
between the goods and services of these earlier marks and Mr Nelson’s class 41
services.
Earlier mark 3198616 (TSB LOCAL PRIDE)
34. The earlier mark is registered for the following goods and services:
Class 35: Business advisory services; providing business management start-
up support for other businesses; business consultancy services; promotional
sponsorship; information, advisory and consultancy services in connection with
all of the aforesaid services.
Class 36: Financial services; fund raising for charity; financial sponsorship
services; banking services; online banking services; online financial
transactions; investment banking; mortgage banking; savings bank services;
money lending; insurance services; administration of insurance plans; advice
relating to insurance; appraisals for insurance purposes; home insurance
services; insurance relating to property; insurance for legal expenses;
insurance consultation; insurance management services; personal insurance
Page 16 of 43services; information, advisory and consultancy services in connection with all
of the aforesaid services.
Class 41: Entertainment services; education and training services; organisation
of competitions and awards; arranging and hosting awards ceremonies;
organising community sporting and cultural events; information, advisory and
consultancy services in connection with all of the aforesaid services.
35. TSB allege conflict with the following goods and services of Mr Nelson’s
registration, namely:
Class 9: Media Content
Class 35: Online advertising network matching services for connecting
advertisers to websites; Online advertising on a computer network; Online
advertising on computer networks; Online advertising services; Online
advertising via a computer communications network; Advertising the goods and
services of online vendors via a searchable online guide; Dissemination of
advertising matter online; Dissemination of advertising via online
communications networks; Online advertising; Providing a searchable online
advertising guide featuring the goods and services of online vendors; Providing
a searchable online advertising guide featuring the goods and services of other
on-line vendors on the internet; Providing searchable online advertising guides.
Class 41: Entertainment agency services; Entertainment booking services;
Entertainment by IP-TV; Entertainment by film; Entertainment by means of
concerts; Entertainment by means of radio; Entertainment by means of
roadshows; Entertainment by means of wireless television broadcasts;
Entertainment in the form of live musical performances (Services providing -);
Entertainment in the form of recorded music (Services providing -);
Entertainment in the form of television programmes (Services providing -).
Page 17 of 4336. I note that the earlier mark covers “entertainment services” at large. Thus, there
can be little doubt that the following services covered by Mr Nelson’s mark fall within
the ambit of that term and are, therefore, to be considered identical:
Entertainment by IP-TV; Entertainment by film; Entertainment by means of
concerts; Entertainment by means of radio; Entertainment by means of
roadshows; Entertainment by means of wireless television broadcasts;
Entertainment in the form of live musical performances (Services providing -);
Entertainment in the form of recorded music (Services providing -);
Entertainment in the form of television programmes (Services providing -).
37. That leaves, in class 41:
Entertainment agency services; Entertainment booking services
38. It may be the case that such services are not identical as they are not
entertainment services per se. However, there is a clear link as they are all aimed at
providing entertainment to the end user, and there is in my view a key complementary
relationship as one is important for the use of the other in such a way that the
consumer would think the responsibility for those services lies with the same
undertaking. I consider there to be a reasonably high (although not the highest) degree
of similarity.
39. In relation to Mr Nelson’s class 9 goods, media content, there is, again, a clear
link. Whilst the physical nature of a good and a service is inherently different, the media
could nevertheless be some form of media entertainment and the purpose is the same
or similar. They could be provided through similar trade channels with, for example,
television entertainment being provided as a service, or as a media download. The
goods therefore also compete. I consider there to be a reasonably high degree of
similarity here.
40. In relation to the class 35 services of Mr Nelson, it is noteworthy that the earlier
mark does not cover advertising services. However, it does cover “promotional
sponsorship”. I consider that there is a difference between advertising and promotional
Page 18 of 43sponsorship, but they both have an aim of enhancing the public’s recognition of a
particular brand. There may be differences in how the two services are performed, but
they could nevertheless be competitive and/or complementary and may also share the
same trade channels and users. I consider there to be a reasonably high degree of
similarity to all of Mr Nelson’s services in class 35.
EUTM 17363136 ( ) and 17363151 (TSB)
41. TSB relies on all of the goods and services for which these marks are registered,
namely:
Class 9: Computer hardware and computer software; computer software
relating to financial services; computer software relating to financial history;
computer software relating to the handling of financial transactions; software
relating to the making of payments using mobile devices; mobile apps;
computer terminals for banking purposes; banking cards [encoded or
magnetic]; encoded cards for use in relation to the electronic transfer of
financial transactions; automated teller machines (ATM); payment terminals,
money dispensing and sorting devices; apparatus for electronic payment
processing; electronic machines for recording financial operations; counterfeit
money detecting apparatus; money counting and sorting apparatus;
mechanical, electric, digital and LED display signs.
Class 16: Printed matter; printed publications; advertising publications;
advertising pamphlets and posters; printed cards, printed credit and debit
cards; advertising signs of paper or cardboard; stationery; pens; pencils;
travellers' cheques; cheques; cheque books; chequebook holders and covers.
Class 35: Advertising and marketing; online advertisements; advertising
relating to financial services; presentation of financial products on
communication media, for retail purposes; price comparison services;
promotion of goods and services through sponsorship; business management;
providing business management start-up support for other businesses;
Page 19 of 43preparation, drawing up and provision of statement of accounts; financial
statement preparation and analysis for businesses.
Class 36: Financial services; online financial services; banking services; online
banking services; online financial transactions; investment banking; investment
services; investment advice and consultancy; fund investment; mortgage
banking; savings bank services; business banking services; online business
banking services; personal banking services; bank account and savings
account services; current, cheque and deposit account services; fund transfers;
direct debit services; money lending; arranging and financing of personal loans;
bank card, credit card, debit card and electronic payment card services; credit
rating; insurance services; administration of insurance plans; advice relating to
insurance; appraisals for insurance purposes; home insurance services; home
content insurance; insurance relating to property; insurance for legal expenses;
life insurance; travel insurance; currency exchange and advice; currency
trading and exchange services; insurance consultation; insurance
management services; personal insurance services; issuing of tokens of value
in relation to customer loyalty schemes; issuance of bonds; stocks and bonds
brokerage; debt consolidation services; financial sponsorship; financial
sponsorship of cultural, sporting, and entertainment activities and events;
charitable fundraising; issuing of statement of accounts; pension services;
pension funds; pension planning; pension scheme services; pension
management services; pension investment management; pension fund
administration services; debt advisory services; debt restructuring; debt
recovery; debt management services; information, advisory and consultancy
services in connection with all of the aforesaid services.
Class 38: Telecommunications; telecommunication services relating to
providing access to financial information, financial services, financial
transactions and financial products; provision of access to content, websites
and portals; providing access to websites on the Internet or any other
communications network; provision of telecommunications access and links to
computer databases and the Internet; data transmission; electronic
communication services; Internet communication services; data
Page 20 of 43communication by electronic means; telecommunication services between
financial institutions; electronic communication services for financial
institutions; broadcasting financial information by satellite, radio and television;
all the aforesaid services relating to finance, banking, insurance and
investment.
Class 42: Electronic monitoring of credit card activity to detect fraud via the
internet; computer virus protection services; IT and computer services; design,
development and maintenance of databases; design of information systems
relating to finance; providing temporary use of non-downloadable software for
analysing financial data and generating reports; development of software for
secure network operations; data and computer security services; electronic
monitoring of personally identifying information to detect identity theft via the
internet; consultancy, advisory and information services relating to all of the
aforesaid, all being in relation to finance, banking, insurance and investment.
Class 45: Legal services; legal advice; legal information services; legal services
relating to business; legal services relating to banking and finance; identity
verification and validation services; consultancy in the fields of identity
verification, data theft and fraud prevention; fraud detection services in the
fields of insurance and finance; investigation services related to insurance
claims.
42. The above goods and services are said to conflict with the goods and services in
classes 9, 35 & 41 of Mr Nelson’s mark. I note that TSB’s services include, again,
advertising services in class 35 which, for reasons already given, are identical (or else
highly similar) to Mr Nelson’s class 35 services. However, I see no similarity, despite
noting TSB’s table of identified similarity with anything else. In reaching this finding, I
have borne in mind that TSB’s services include telecommunications and broadcasting,
which is arguably similar to certain types of entertainment in class 41. However, there
is a distinction between the method of facilitation of signals (class 38) and the provider
of the entertainment itself. This step away is re-enforced by the fact that the actual
class 38 services of TSB are limited to the provision of telecommunications in the field
Page 21 of 43of finance, so any link with an entertainment service is strained to say the least. I see
no other basis for arguing similarity between anything else.
UK 3369388 (TSB WELCOME BACK TO LOCAL BANKING) & 3369402 (TSB THE
HOME OF LOCAL BANKING)
43. TSB relies on all of the goods and services for which these marks are registered,
namely:
Class 9: Computer hardware and computer software; computer software
relating to financial services; computer software relating to the handling of
financial transactions; software relating to the making of payments using mobile
devices; mobile apps; computer terminals for banking purposes; banking cards
[encoded or magnetic]; encoded cards for use in relation to the electronic
transfer of financial transactions; automated teller machines (ATM); payment
terminals, money dispensing and sorting devices; apparatus for electronic
payment processing; electronic machines for recording financial operations;
counterfeit money detecting apparatus; money counting and sorting apparatus;
mechanical, electric, digital and LED display signs; computer software relating
to financial history; electronic purses and chip cards; credit cards; charge cards;
cash cards; debit cards; electrical and electronic apparatus all for use with bank
card, credit card and charge card transactions; electronic apparatus for
encoding, reading or verifying encoding cards or data carriers in the nature of
cards; apparatus for storage and retrieval of data.
Class 16: Printed matter; printed publications; books, magazines and
newsletters; brochures; advertising publications; advertising pamphlets and
posters; printed cards, printed credit, charge, cash and debit cards; advertising
signs of paper or cardboard; stationery; pens; pencils; travellers' cheques;
cheques; cheque books; chequebook holders and covers; educational and
instructional material.
Class 35: Advertising and marketing; online advertisements; advertising
relating to financial services; presentation of financial products on
Page 22 of 43communication media, for retail purposes; price comparison services;
promotion of goods and services through sponsorship; business management;
providing business management start-up support for other businesses;
preparation, drawing up and provision of statement of accounts; financial
statement preparation and analysis for businesses; business appraisal;
business development services; business administration services; business
consultancy services; business information, enquiry, research and investigation
services; business relocation services; business organisation services;
accounting and book-keeping services; economic forecasting and analysis;
personnel management, consultancy and recruitment services; provision, hire
and rental of office machinery; arranging and conducting of exhibitions for
business purposes; organisation and preparation of payroll; promotion
services; telephone answering services.
Class 36: Financial services; online financial services; banking services; online
banking services; online financial transactions; banking and financial services,
including deposit-taking and storage of valuables; automated banking services;
automated payment of accounts; credit services; consumer, commercial and
mortgage lending; investment banking; investment services; investment advice
and consultancy; fund investment; mortgage banking; savings bank services;
business banking services; online business banking services; personal banking
services; bank account and savings account services; current, cheque and
deposit account services; fund transfers; money transfers; direct debit services;
money lending; arranging and financing of personal loans; hire-purchase
financing; real estate financing; valuation, investment and management
services; bank card, credit card, debit card and electronic payment card
services; credit rating; credit services; insurance services; administration of
insurance plans; advice relating to insurance; appraisals for insurance
purposes; home insurance services; home content insurance; insurance
relating to property; insurance for legal expenses; life insurance; travel
insurance; currency exchange and advice; currency trading and exchange
services; insurance consultation; insurance management services; personal
insurance services; issuing of tokens of value in relation to customer loyalty
schemes; issuance of bonds; stocks and bonds brokerage; debt consolidation
Page 23 of 43services; financial sponsorship; financial sponsorship of cultural, sporting, and
entertainment activities and events; charitable fundraising; issuing of statement
of accounts; asset and portfolio management; pension services; pension funds;
pension planning; pension scheme services; pension management services;
pension investment management; pension fund administration services; tax
and estate planning; debt advisory services; debt restructuring; debt recovery;
debt management services; information, advisory and consultancy services in
connection with all of the aforesaid services.
44. The above goods and services are alleged to conflict with the goods and services
in classes 9, 35 and 41 of Mr Nelson’s mark. I note that TSB’s services include, again,
advertising services in class 35 which, for reasons already given, are identical (or else
highly similar) to Mr Nelson’s class 35 services. However, I see no similarity, despite
noting TSB’s table of identified similarity, to anything else. There is nothing closer to
the goods and services here than I have already assessed with any of the other earlier
marks.
Average consumer and the purchasing act
45. The average consumer is deemed to be reasonably well informed and reasonably
observant and circumspect. For the purpose of assessing the likelihood of confusion,
it must be borne in mind that the average consumer's level of attention is likely to vary
according to the category of goods or services in question: Lloyd Schuhfabrik Meyer,
Case C-342/97. In Hearst Holdings Inc, Fleischer Studios Inc v A.V.E.L.A. Inc,
Poeticgem Limited, The Partnership (Trading) Limited, U Wear Limited, J Fox Limited,
[2014] EWHC 439 (Ch), Birss J. described the average consumer in these terms:
“60. The trade mark questions have to be approached from the point of view of
the presumed expectations of the average consumer who is reasonably well
informed and reasonably circumspect. The parties were agreed that the
relevant person is a legal construct and that the test is to be applied objectively
by the court from the point of view of that constructed person. The words
“average” denotes that the person is typical. The term “average” does not
denote some form of numerical mean, mode or median.”
Page 24 of 4346. Combined, Mr Nelson’s goods and services and those of the various earlier marks
are voluminous in number. It would be disproportionate to make a separate
assessment for each. I will focus on the goods and services applied for, together with
which goods and services of the earlier marks I have found to be identical/similar. In
other words, I will focus on the average consumer of the conflicting goods and
services.
47. No conflict was alleged with Mr Nelson’s class 1 goods under this ground, so
nothing further needs to be said here.
48. In class 35, Mr Nelson’s services are of an advertising nature. I have held them to
conflict (being either identical or highly similar) to various advertising services in a
number of the earlier marks. Advertising services are predominantly used by business
users to promote their goods and services. They can, though, also be used by
members of the general public to generate interest in a product they are seeking to
sell, often on the second-hand market. For business users, and whilst price can vary,
the selection of an appropriate service provider will be an important choice, so there
is a reasonably high level of care and consideration. For members of the general
public, whilst the choice will still be important, it is not so to the same extent, so an
average level of care and consideration applies here. For both types of consumer, the
marks will most often be seen on websites, advertising material, brochures etc. Whilst
this means that the visual impact of the marks will be more important, I do not discount
the aural significance either.
49. In class 41, Mr Nelson’s services are of an entertainment nature. I have held them
to conflict (i.e. are identical) with the entertainment services of at least one of TSB’s
earlier marks. Mr Nelson’s specification also covers entertainment agency and
booking services, which I have found to be similar to a reasonably high degree to
TSB’s entertainment services. Whilst businesses could book entertainment for
corporate events, the services are largely aimed at members of the general public.
Either way, I consider the services will be selected with an average degree of care and
consideration and the marks encountered, again, through largely visual means. This
also applies to Mr Nelson’s media content in class 9.
Page 25 of 43Comparison of marks
50. It is clear from Sabel BV v. Puma AG (particularly paragraph 23) that the average
consumer normally perceives a mark as a whole and does not proceed to analyse its
various details. The same case also explains that the visual, aural and conceptual
similarities of the marks must be assessed by reference to the overall impressions
created by the marks, bearing in mind their distinctive and dominant components. The
CJEU stated at paragraph 34 of its judgment in Case C-591/12P, Bimbo SA v OHIM,
that:
“.....it is necessary to ascertain, in each individual case, the overall impression
made on the target public by the sign for which registration is sought, by means
of, inter alia, an analysis of the components of a sign and of their relative weight
in the perception of the target public, and then, in the light of that overall
impression and all factors relevant to the circumstances of the case, to assess
the likelihood of confusion.”
51. It would be wrong, therefore, to artificially dissect the trade marks, although it is
necessary to take into account the distinctive and dominant components of the marks
and to give due weight to any other features which are not negligible and therefore
contribute to the overall impressions created by the marks.
52. Two of the earlier marks (2627737 & EUTM 017363151) are for the letters TSB
alone. I begin here, the marks to be compared being:
TSBUK v TSB
53. The overall impressions of both marks comprise just the letters of which they are
constituted. No emphasis is given to any particular letter or letters. I keep in mind,
though, that whilst some average consumers may see TSBUK as a wholly invented
series of letters (or unusual word), a significant proportion will see it as TSB and UK
conjoined.
Page 26 of 4354. Visually, whilst Mr Nelson’s mark is longer and has the additional letters UK, there
is still some visual similarity on account of the shared letters TSB at the beginning of
the respective marks. I consider there to be a medium degree of visual similarity.
55. Aurally, and whether the average consumer sees TSBUK or TSB UK, they will
likely articulate the marks on the basis of just the letters. So, again, whilst one mark is
longer (of five syllables versus three), there is similarity in the shared first three
syllables tee-es-be. There is a medium degree of aural similarity. In making this
finding, I accept that there may be some average consumers who might attempt to
articulate Mr Nelson’s marks as a word, as TSU-BUK perhaps. However, those who
might attempt this will not be significant in number.
56. Conceptually, TSB has no obvious meaning. TSBUK similarly so. Even though a
significant proportion of average consumers will note the UK aspect of Mr Nelson’s
mark and, thus, will see this as a reference to the UK, and whilst this could be said to
create a form of conceptual difference, it does not impact on the appreciation or
concept of the remaining TSB aspect of Mr Nelson’s mark and its consequent
conceptual neutrality in comparison to TSB in the earlier mark.
57. Two of the earlier marks (2629130 & 1736136) are figurative marks, as follows:
58. In terms of overall impression, I consider the letters TSB to have greater relative
weight, although the three circular devices still play a reasonable role in the overall
impression of the marks.
59. The impact of this on my assessment of similarity (compared to my findings on
TSB alone) is that there is consequently less visual similarity (which I pitch between
low and medium) but the aural and conceptual assessment is the same.
Page 27 of 4360. The remaining marks (3198616, 3369388 & 3369402) are:
• TSB LOCAL PRIDE
• TSB WELCOME BACK TO LOCAL BANKING
• TSB THE HOME OF LOCAL BANKING
61. In each case, bearing in mind the position of TSB at the start of the mark, and
with the additional words likely to be perceived as some form of weakly distinctive (if
distinctive at all) strapline or slogan, TSB, again, has the greatest relative weight in
the overall impression, although the additional words are clearly not negligible.
62. In terms of the comparison with Mr Nelson’s mark, I find the visual similarity to be
between low and medium, aural similarity the same. In terms of concept, the TSB
aspect (the part with most relative weight) is still conceptually neutral, but the
additional wording does create a difference in meaning of that component, which is
not shared by the other mark.
Distinctive character of the earlier trade marks
63. Having compared the marks, it is necessary to determine the distinctive character
of the earlier marks, in order to make an assessment of the likelihood of confusion. In
Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, the CJEU stated that:
“In determining the distinctive character of a mark and, accordingly, in
assessing whether it is highly distinctive, the national court must make an
overall assessment of the greater or lesser capacity of the mark to identify the
goods or services for which it has been registered as coming from a particular
undertaking, and thus to distinguish those goods or services from those of other
undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-
108/97 and C-109/97 WindsurfingChiemsee v Huber and Attenberger [1999]
ECR I-0000, paragraph 49).
Page 28 of 43In making that assessment, account should be taken, in particular, of the
inherent characteristics of the mark, including the fact that it does or does not
contain an element descriptive of the goods or services for which it has been
registered; the market share held by the mark; how intensive, geographically
widespread and long-standing use of the mark has been; the amount invested
by the undertaking in promoting the mark; the proportion of the relevant section
of the public which, because of the mark, identifies the goods or services as
originating from a particular undertaking; and statements from chambers of
commerce and industry or other trade and professional associations (see
Windsurfing Chiemsee, paragraph 51).”6
64. From an inherent perspective, and looking firstly at the TSB marks, the letters
have no specific meaning. They are not allusive of anything for which the marks are
registered. That said, letter combinations are unlikely to be regarded as highly
distinctive, as the average consumer will be aware that acronyms are used by many
businesses to represent the initials of something connected to that business. I consider
the marks to be reasonably (although not highly) distinctive.
65. In terms of whether that distinctiveness is enhanced through use, I am conscious
of my earlier observation that TSB is clearly a well-known mark. However, what it is
known for are, largely speaking, financial services, with, perhaps, some extension into
business advice. That means that there is no enhanced distinctiveness from the
perspective of the goods and services which I have found to be in conflict under
section 5(2)(b). In making this finding, I have noted the evidence relating to the
sponsorship of the Pride of Britain Awards and TSB’s significant advertising. However,
this does not enhance the distinctiveness of the earlier marks is relation to either
entertainment or advertising services, these simply being vehicles under which the
financial services are promoted.
66. In relation to the other earlier marks, whilst the additional components may
increase (although in my view only to a small degree) the overall level of inherent
distinctiveness, this is unlikely to be material in the assessment of likelihood of
6 C-342/97, paras. 22-23
Page 29 of 43confusion, given that it is the distinctiveness of the common element, TSB, which is
key. My findings on enhanced distinctiveness apply in equal measure here.
Likelihood of confusion
67. The factors assessed so far have a degree of interdependency (Canon Kabushiki
Kaisha v. Metro-Goldwyn-Mayer Inc, paragraph 17), a global assessment of them
must be made when determining whether there exists a likelihood of confusion (Sabel
BV v. Puma AG, paragraph 22). However, there is no scientific formula to apply. It is
a matter of considering the relevant factors from the viewpoint of the average
consumer and determining whether they are likely to be confused. Confusion can be
direct (which effectively occurs when the average consumer mistakes one mark for
the other) or indirect (where the average consumer realises the marks are not the
same, but puts the similarity that exists between the marks and goods/services down
to the responsible undertakings being the same or related). In terms of indirect
confusion, this was dealt with by Mr Iain Purvis QC, sitting as the Appointed Person,
in L.A. Sugar Limited v By Back Beat Inc, Case BL-O/375/10 where he noted that:
“16. Although direct confusion and indirect confusion both involve mistakes on
the part of the consumer, it is important to remember that these mistakes are
very different in nature. Direct confusion involves no process of reasoning – it
is a simple matter of mistaking one mark for another. Indirect confusion, on the
other hand, only arises where the consumer has actually recognized that the
later mark is different from the earlier mark. It therefore requires a mental
process of some kind on the part of the consumer when he or she sees the later
mark, which may be conscious or subconscious but, analysed in formal terms,
is something along the following lines: “The later mark is different from the
earlier mark, but also has something in common with it. Taking account of the
common element in the context of the later mark as a whole, I conclude that it
is another brand of the owner of the earlier mark”.
68. I consider that none of the earlier marks are likely to be directly confused (or vice
versa) with Mr Nelson’s mark as, even in relation to the alleged conflict with TSB alone,
I believe the whole mark construction of TSBUK will be recalled, even by those who
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