• The VIA Art Fund opposition and appeal decisions provide an important reminder for those seeking to enforce registered trade mark rights in the UK.¹ While incorporating a figurative element to a descriptive mark can enhance its distinctiveness and registrability, it does not provide exclusive rights over the descriptive elements of the mark. This is vital for businesses to consider as part of their branding strategies and trade mark protection efforts.
• The decisions also highlight the importance of identifying the distinctive element of an earlier mark when assessing the likelihood of confusion with an application mark. If the distinctive element from the earlier mark is absent in the application mark, it will reduce the likelihood of confusion between the two. In this particular case, the decisions emphasised that the lack of the distinctive figurative heart element from the opponent’s registered mark in the application eliminated any risk of confusion.
• It was further clarified that use of a descriptive term that does not denote origin does not necessarily build goodwill or prompt the public to associate the term with the business.
• Companies should therefore be alert to the limitations of descriptive marks, even when they are dressed up with distinctive stylistic elements.

UKIPO Decision²

Via Art Fund (“VAF”) applied to register the word ‘VIA ART FUND’ as a UK trade mark (the “Application Mark”) for services in classes 35, 36 and 41 (the “Application”).

National Art Collections Fund (“NACF”) opposed the Application (the “Opposition”) on three limbs:

1. a likelihood of confusion based on NACF’s prior UK series registration of the below stylised signs (the “Logo”):

2. passing off based on purported goodwill in the sign the ‘ART FUND’ (“Earlier Sign”); and

3. that the Application Mark was descriptive and devoid of distinctive character.

1. Was there a likelihood of confusion?

To succeed on this limb, NACF needed to show that (i) the Application Mark was similar to the Logo, (ii) the respective services covered by the Application Mark and the Logo were similar or identical and (iii) as a result, there was a likelihood of confusion on the part of the average consumer.

NACF focused its argument primarily on the claim that the Application Mark was highly similar to the Logo, as the dominant and distinctive element of the Application Mark were the words ‘ART FUND’ (which words also formed the sole verbal element of the Logo). According to NACF, the only distinguishing feature between the Application Mark and the Logo was what they claimed to be the descriptive and non-distinctive word ‘VIA’.

In response, VAF’s position was that there was no likelihood of confusion, as the only common elements were the descriptive, non-distinctive and generic words ‘ART FUND’. VAF highlighted that the Logo’s dominant and distinctive elements were its stylistic features, which included the distinctive heart symbol and the use of different colours in each of the signs comprising the Logo. These stylistic elements were all absent in the Application Mark, which was a pure word mark consisting of three separate words. Given that the only similarity between the Application Mark and the Logo was in non-distinctive elements and that the differences between the marks were in their distinctive elements, VAF argued that there was no realistic prospect of a direct or indirect likelihood of confusion.

Overall Impression

The Hearing Officer considered the overall impression of the Application Mark and the Logo noting that:

• Logo - Although the larger word elements, ‘ArtFund’, may have been perceived as the dominant aspects of the Logo, given that both parties considered the words ‘ART’ and ‘FUND’ descriptive and non-distinctive in the context of the services in question, the figurative heart element and overall get-up of the Logo would “play a very important, distinctive, role” in the Logo.
• Application Mark - The Application Mark would be perceived as a three-word mark that had an “unusual construction” that would require intellectual reflection and additional elements for the Application Mark to be considered a descriptive, non-distinctive term. Moreover, the Application Mark’s distinctiveness stemmed from the unconventional combination of the three words as a whole.

Visual, Aural and Conceptual Comparison

Overall, the Hearing Officer determined that visually, the marks had at least a medium degree of similarity, with differences being the word ‘VIA’ at the start of the Application Mark and the use of colour and the small heart device in the Logo. Aurally, the marks were highly similar as they all included the words ‘ART FUND’, which would be pronounced identically, save for the word ‘VIA’ which was absent in the Logo. Conceptually, considering the context of the services in question, the marks were deemed highly similar due to the presence of the words ‘ART FUND’.

Distinctive Character

The Hearing Officer’s assessment of the Logo’s distinctiveness was a key factor in the decision. Due to the term ‘ART FUND’/’ArtFund’ being entirely descriptive and devoid of distinctive character, the Hearing Officer held that there would be no likelihood of confusion between the Application Mark and the Logo.

The Hearing Officer also stated that this would be the case even if the respective services were considered identical.

The decision highlights the limitations of descriptive marks with figurative elements. Even when the services covered by the respective marks are identical, and the verbal elements of the earlier mark are included in the later mark, this decision demonstrates that the UKIPO may dismiss an opposition if the verbal elements of the earlier mark are descriptive/non-distinctive. Businesses that have invested in their logos or attempted to register descriptive terms by incorporating distinctive figurative elements, should be cautious if they later wish to rely on such marks to oppose potential competitors’ applications. Indeed, when businesses engage marketing professionals in creating or assisting with logo design, it’s advisable to seek guidance from legal advisors to assess the distinctive character of the mark.

2. Was there a risk of passing off?

Under this limb, NACF had to demonstrate that:

• It had established goodwill through the use of the Earlier Sign; and
• The use of VAF’s Application Mark would lead to a misrepresentation (where the public would be led to believe the services provided under the Application Mark were in some way connected, licensed by or authorised by NACF) and damage to NACF’s goodwill in the Earlier Sign.

VAF argued that NACF’s evidence failed to prove goodwill in the Earlier Sign, so there could be no misrepresentation or damage. VAF highlighted that NACF’s evidence did not demonstrate use of the Earlier Sign per se, but rather it showed (i) use of the Logo or another heavily stylised heart mark, or (ii) use of the mark ‘THE ART FUND’. Furthermore, VAF contended that the use of ‘VIA’ removed any possibility of misrepresentation, given that the overlap in the respective marks was only in the generic, descriptive, and non-distinctive aspects ‘ART FUND’.

The Hearing Officer concluded that NACF had not established goodwill as the Earlier Sign was descriptive and non-distinctive. Here, the Hearing Officer also recounted earlier reasoning from the Court of Appeal that: “The more general and descriptive the name is, the more difficult it will be to establish the reputation and goodwill of the claimant in that term and the existence of a misrepresentation by the defendant in the use of the same name.”

3. Was the ‘VIA ART FUND’ application non-distinctive and descriptive?

A trade mark application should be refused registration if it lacks distinctive character, or if it is descriptive of the goods and services covered by the specification of the application.

Relying on this ground, NACF argued that:

• The Application Mark indicated that the applied for services would be provided “by way of” or “through” an art fund; and
• Consequently, the average consumer would not consider the Application Mark as indicating VAF as the source of such services, but as a generic description of the services.

VAF accepted that the term ‘ART FUND’ was descriptive, devoid of any distinctive character and generic in respect of all of the Application services, but the inclusion of the word ‘VIA’ at the beginning of the Application Mark negated any possibility of the Application Mark being considered descriptive or lacking distinctiveness as a whole. This was because the term ‘VIA’ was too abstract to refer to any specific service and did not describe or suggest any characteristics of the services under the Application. The Hearing Officer concurred, stating that despite the Application Mark’s individual components being common words, its overall unusual construction would not be considered descriptive or devoid of any distinctive character.

Decision by the Hearing Officer

The Hearing Officer rejected the Opposition on each of the limbs advanced by NACF. However, NACF appealed to the Appointed Person.

Decision of the Appointed Person

The most relevant grounds of appeal related to NACF’s argument that there was a likelihood of confusion between the Application Mark and the Logo. In particular, NACF challenged the Hearing Officer’s method of comparing the Logo and the Earlier Sign, namely that the Hearing Officer had overlooked the conclusion that the figurative elements would be disregarded in any aural or conceptual comparison. The Appointed Person rejected this argument on the basis that, when the figurative element of an earlier mark contributes significantly to its distinctiveness and plays a crucial role in the perception of the average consumer, the Hearing Officer is justified in concluding that there is no likelihood of confusion if that element is then absent in the application mark.

Overall, the Appointed Person rejected the NACF's appeal in its entirety and upheld the Hearing Officer’s decision that the Opposition was unsuccessful.

Comment

The outcome of this case makes it clear that while adding a figurative element to a descriptive mark can enhance its distinctiveness and registrability, it does not grant businesses monopoly rights over the descriptive element of the mark when that mark is incapable of denoting origin. Consequently, organisations should exercise caution when devising branding strategies and objectively assess potential confusion risks when enforcing their trade marks. It would also be prudent for organisations to note that relying solely on the descriptive elements of trade marks is insufficient if the distinctive features are absent in the marks they are seeking to challenge.

[1] VAF was represented by Dechert LLP.

[2] Decision O/1136/22 can be accessed online at the following link: https://www.ipo.gov.uk/t-challenge-decision-results/t-challenge-decision-results-bl?BL_Number=O/1136/22