MULTIBUS overtakes VW’s MULTIVAN
This case is the first decision from the appointed person in 2021 and resulted in a rare success for an appellant.
The applicant, Mr O’Halloran from Lincoln, filing his first trade mark application was seeking to register MULTIBUS for vehicles in class 12. His application was opposed by Volkswagen based on an international registration designating the EU for MULTIVAN.
Before the UKIPO Volkswagen was successful:
- The hearing officer found that MULTIVAN was distinctive to an average degree.
- The hearing officer also concluded that there would be indirect confusion because consumers would see MULTIBUS as a sub brand of MULTIVAN.
- Finally, the hearing officer found that consumers would take great care and be very attentive when buying such goods.
All this was notwithstanding the fact that Volkswagen had not used its mark in the United Kingdom. Nor did Volkswagen own a family of MULTI- prefixed marks in use.
Having found in favour of Volkswagen Mr O’Halloran appealed the decision to the appointed person.
The appointed person disagreed with the analysis by the hearing officer. He said:
Whilst MULTIVAN is an invented word, the highly descriptive nature of its component parts… put it at the lowest end of the spectrum of distinctiveness within which valid trade marks may exist.
The appointed person also concluded that with an attentive consumer:
it would be folly for a consumer to conclude...that the marks indicate a common trade origin.
Perhaps the most interesting point about this short decision is what is not mentioned. There is no specific reference to the grounds of appeal by Mr O’Halloran. Whilst Volkswagen was not represented at the appointed person hearing, from the decision, it appears that the appointed person may well have taken the decision himself that the hearing officer was wrong and the decision should be overturned (leaving aside whether there were any valid grounds for appeal).
The appointed person concluded his decision by saying:
The decision was well outside the bounds of what a reasonable tribunal acting reasonably could have decided on the facts of this case.
Whilst MULTIVAN may be well known in many countries in Europe the lack of its use in the UK probably went some way towards Volkswagen’s failure to persuade the tribunal that the marks were sufficiently close that confusion would arise.
This case once again illustrates that marks with a below average level of distinctiveness will not be afforded broad rights over and beyond the mark as registered.