ID Software Inc's Doomed Appeal to the Appointed Person
Case O-168-11, 6 May 2011, in the matter of UK application 2420872 TOWER OF DOOM and Opposition No. 94746 thereto by ID Software, Inc.
The Early Learning Centre applied to register the trade mark TOWER OF DOOM in class 28 for 'toys; games and playthings; playing cards; gymnastic and sporting articles; parts and fittings for all of the aforesaid goods'.
The application was opposed by ID Software, Inc under Sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994. For the purposes of Sections 5(2)(b) and 5(3), the opponent relied upon earlier UK trade mark registrations for DOOM and DOOM in a stylised format (as depicted left) and a Community trade mark for DOOM 3. All of these earlier trade marks covered computer software games and related goods in class 9. The CTM also covered various manuals sold as a unit with the computer software games in class 16.
Under Section 5(4)(a), the opponent claimed earlier rights in its unregistered trade mark DOOM in respect of all of the registered goods in classes 9 and 16, together with motion picture films, board games and figurines.
During the course of the opposition proceedings, the applicant put the opponent to proof of use of its two UK registered trade marks and also to the claim to the goodwill and reputation.
The case was originally heard by Mr Mike Foley who issued a written decision on 27 May 2010 (BL O/173/10).
In assessing proof of use and reputation of the opponent’s trade marks, the hearing officer found that the DOOM computer/video game was launched in the early 1990s and had been successful, prompting further editions, such as DOOM 3. There was a continuing market in such games during the relevant proof of use period such that genuine use had been established by the opponent for computer/video games (but not for the other goods).
The hearing officer also found that use had been shown in connection with a DOOM board game and movie. Although these goods were outside the opponent’s registered specifications, use in relation to such goods and services may have increased awareness of the opponent’s computer game. However, the hearing officer found no evidence that miniatures used to play the board game were sold separately.
On his analysis under Section 5(2)(b) of the Trade Marks Act, the hearing officer found that the opponent's earlier DOOM trade marks accordingly had enhanced distinctiveness through the use and reputation in computer/video games and software.
However, he found that there was insufficient similarity between the two trade marks DOOM and TOWER OF DOOM for them to be regarded as similar.
Turning to a comparison of the corresponding goods, although there was no evidence to show how the trade classifies such items, in the hearing officer’s view, toys, playthings, gymnastics and sporting articles in the applicant’s mark were not similar to the computer/video games software or manuals for such software as covered by the opponent’s marks and demonstrated by their evidence of use.
The hearing officer did find that games, as included in class 28 of the applicant’s specification, were in fact similar to the opponents goods in class 9.
Under Section 5(2) the hearing officer’s conclusions were
….notwithstanding the commonality in the use of the word DOOM, the potential similarity in respect of “games” and the connected “notional” circumstances of the manufacture, market and consumer, for the reasons I have given, in particular the difference in the respective marks, use of the mark applied for will not lead to confusion. The opposition under Section 5(2)(b) therefore fails.
The opposition was also dismissed under Section 5(3) and 5(4)(a), following the hearing officer’s finding that the marks were not similar.
On 24 June 2010, the opponent filed a Notice of Appeal to the Appointed Person, Professor Annand. Various grounds of appeal were put forward, the focus of which was that the hearing officer had erred in law by effectively applying a 'threshold' test for similarity between the respective trade marks, rather than determining the relative degree of similarity as required by practice guidelines set out in PAN 8/07.
The threshold test for similarity was set out by the Chancery Division of the High Court of Justice in Esure Insurance Limited v Direct Line Insurance Plc but was overturned by the subsequent Court of Appeal ruling in that case.
The other main ground of appeal focused on the alleged failure of the hearing officer to acknowledge that the word 'tower' may have been descriptive of the goods claimed by the applicant eg, when applied to games featuring or including towers.
The appointed person rightly rejected any arguments on the latter point, pointing to the fact that the hearing officer had specifically referred the opponent’s descriptiveness argument in his comparison of the marks (paragraphs 28 and 31 of the hearing officer’s decision). Applying the principals of REEF, as these matters were of a valuation and assessment by the hearing officer, the appointed person was unable to interfere with that assessment in the absence of a distinct or material error of principal.
This left only the ground of appeal based on the 'threshold test' with regard to the hearing officer’s analysis of the similarity of the respective trade marks. The opponent’s main complaint was that the hearing officer had, by applying the inappropriate test, failed to appreciate the significance of DOOM in the applicant’s mark which he should have found to be dominant and distinctive element, leading him to the conclusion that DOOM and TOWER OF DOOM were confusingly similar.
The appointed person found that the hearing officer did not apply a 'threshold test' (and even if he did, it made no difference because he went on to consider other factors). She felt that the opponent’s real complaint in the appeal was that the hearing officer had found that the marks could not be considered similar. However that finding alone, if it was reached through appropriate means, was not a material error of principal.
The appointed person pointed out that there have been several examples of cases before the supervising courts in Luxembourg where despite marks containing a common element, the differences resulted in the marks not be similar. She referred in particular to the case C-552/09 P, Ferrero SpA v OHIM(where the trade marks TIMI KINDERJOGHURT was not found to be similar to the earlier word mark KINDER.).
Nevertheless, cases of this type are difficult to reconcile with the ECJ’s decision in Medion AG v Thomson. Readers will recall that the ECJ found the two trade marks THOMSON LIFE and LIFE to be confusingly similar, holding that the earlier sign (LIFE) still retained an independent distinctive role in the composite trade mark THOMSON LIFE. This line of reasoning has equally been followed in many decisions. For example in the General Court’s decision in X-Technology R & D Swiss GmbH where the trade marks FIRST and FIRST-ON-SKIN were found to be confusingly similar. In the latter case, the General Court held that two trade marks may be found to be similar if they have at least one component in common and also pointed out that when an earlier trade mark (FIRST) is entirely contained in the later trade mark (FIRST-ON-SKIN) the marks may also be found to be similar.
Whilst it should be noted that the ECJ’s decision in Thomson Life and the General Court’s decision in FIRST and FIRST-ON-SKIN, both involved goods which were identical, this trend of case law from senior courts in Europe has suggested that the adoption of any mark which includes an earlier registered trade mark owned by a third party becomes increasingly risky. With this in mind, despite a less established overlap between the corresponding goods involved in this case, many would have believed that the trade marks DOOM and TOWER OF DOOM would have found to be confusingly similar.