Defining similarities: YESSICA/JESSICA
Opposition by Cofra Holding AG to UK 2379969: The applicant (Toppy Trademarks Ltd) applied for the mark, shown below, for clothing, footwear and headgear in class 25.
The application was opposed on the basis of three earlier CTMs for YESSICA. Two covered goods in classes 14, 18 and 25; the third covered textiles and textile goods; bed and table covers in class 24, and retailing services in class 35. A likelihood of confusion was alleged under Section 5(2)(b) of the Trade Marks Act 1994.
All three CTMs pre-dated the filing of the application. However, by the time the case came to a hearing, the first two CTMs had expired and were beyond the restoration period.
The opponent submitted that the relevant date for determining registrability was the application date when the CTMs were still registered (as they were when the opposition was filed). The applicant, of course, disagreed and argued that the marks would be discounted from the opposition.
The hearing officer agreed with the applicant.
She based her assessment on the essential function of a trade mark – to guarantee origin to the consumer. She found that the function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which is registered only after the term of protection of the earlier mark has expired. If there is no period during which both marks co-exist, no conflict can arise.
The opposition therefore proceeded only on the basis of the third mark - the word mark YESSICA, registered in classes 24 and 35 above.
According to the usual analysis, the hearing officer found a high level of similarity between retailing services in class 35 and clothing, footwear and headgear in class 25.
However, with regard to class 24, she disagreed that textiles and textile goods; bed and table covers were similar to the goods in class 25, simply on the basis that class 25 goods are made of textile. She found a low level of similarity between textiles and clothing and headgear (they could be complimentary in the case of tailoring – buying a bespoke item – or competitive where a choice is made between buying fabric for dressmaking, or a finished article of clothing). There was no similarity with footwear.
She found no similarity between the class 25 goods and bed/table covers. There was no evidence to support the opponent’s assertions of brand extension into this area.
Finally, she found no similarity between the class 25 goods and textile goods (as opposed to textiles) – they are not found in proximity on shop shelves and are not competitive or complimentary.
On her comparison of the marks, the hearing officer found a reasonable degree of visual similarity between the marks and a good deal of aural similarity. However, conceptually the marks were dissimilar: YESSICA being an invented word and JESSICA being a well known forename in the UK.
She noted that clothing is a visual purchase, so the visual aspect of the similarity should carry more weight in her comparison than the aural similarity. However, she concluded that any similarities between the marks visually/aurally and between the goods/services were offset by the conceptual dissimilarity of the marks – there was no likelihood of confusion.
The opposition failed.
This is a rare example of a case where conceptual dissimilarity can be sufficient to overcome other similarities, both between the marks and the corresponding goods.