Appeal

At first instance the hearing officer found that, while there was insufficient likelihood of direct confusion between the marks BOY and LES BOYS, there was a likelihood of indirect confusion and he upheld the objection to continued registration on that basis. The registered proprietor appealed this decision based on the assessment of how the average consumer would understand the trade mark, the comparison of the mark and sign and the finding of indirect confusion.

Meaning of the trade mark

Key to the appellant’s case was the definition of “Les Boys” and how this term would be understood by the average consumer. The appellant argued that this was fundamental because if affected the way in which the mark would be viewed and the degree of similarity. To this end the appellant relied on the Urban Dictionary definition of “lesboy” which defines the term as “a lesbian-identified male”.

However, when assessing the marks the hearing officer determined that the average consumer would view the mark as meaning “The Boys” as “Les” is a well-known French definite article meaning “The”.

The appointed person stated that “the mere existence of a word or phrase in the Urban Dictionary does not in any way prove that the particular word or phrase is in fact known to the public or understood as denoting the “definition” given on the website, and far less that it is known and understood by the UK public. I therefore consider that Urban Dictionary entries, the provenance of which is not known, bear very little, if any, weight, without further evidence to show that the concept is known in the UK or that the average consumer of the goods and services would be aware of it”.

Based on these points, the appointed person upheld the hearing officer’s view of the definition of the mark. The take away from this is that relying solely on the Urban Dictionary definition of a term is not going to get you anywhere in UKIPO proceedings.

Indirect confusion

The other interesting aspect of this case is the discussion around the finding of indirect confusion, which is where consumers do not mistake the sign for the trade mark, but believe that goods/services denoted by the sign come from the same undertaking as goods/services denoted by the trade mark or from an undertaking which is economically linked to the undertaking responsible for goods/services denoted by the trade mark.

"a) where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all. This may apply even where the other elements of the later mark are quite distinctive in their own right (‘26 RED TESCO’ would no doubt be such a case).
b) where the later mark simply adds a non-distinctive element to the earlier mark, of the kind which one would expect to find in a sub-brand or brand extension (terms such as ‘LITE’, ‘EXPRESS’, ‘WORLDWIDE’, ‘MINI’ etc.).
c) where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension ("FAT FACE" to "BRAT FACE" for example)."

While it was held that the present case does not fall exactly into any of the above, the appointed person held that the hearing officer was correct in finding indirect confusion on the following grounds:

• on the assumption that the average consumer would see the element “Les” as a French definite article, Les Boys has added a non-distinctive element to the earlier mark;
• the respective marks would be remembered as either singular or plural “BOY” marks. The elements are also sufficiently distinct in the trade mark that the “Boys” element can legitimately be regarded as performing a separate (and sufficiently independent) specific distinctive role from that of the “Les” element;
• cosmetics and related products and services is a commercial sector in which brand extensions are not uncommon and may therefore be expected by an average consumer;
• the term “BOY” does possess some low level distinctive character in relation to the goods.

The appeal was dismissed on all grounds.