O/068/19

TRADE MARKS ACT 1994

CONSOLIDATED PROCEEDINGS

IN THE MATTER OF APPLICATIONS NO. UK00003310925 AND NO. UK00003342648

BY GLOBAL ESPRIT INC.

BOTH TO REGISTER THE FOLLOWING MARK:

AND

IN THE MATTER OF CONSOLIDATED OPPOSITIONS THERETO

UNDER NO. 414329 AND NO. 415058 BY

KONA USA, INC.

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BACKGROUND AND PLEADINGS 1. On 15 May 2018, Global Esprit, Inc. (“the applicant”) applied to register the trade

mark shown on the cover page of this decision in the UK for the following goods (“the

First Application”):

Class 25 Sports caps and hats; Bathing caps; Swimming caps; Swim wear; Swim

wear for gentlemen and ladies; Bathing trunks; Bathing suits; Bathing

suits for men; Parts of clothing, namely, gussets for tights, gussets for

stockings, gussets for bathing suits, gussets for underwear, gussets for

leotards and gussets for footlets; Swimsuits; Bathing costumes; Survival

suits, namely, insulated overall wet suits and dry suits; Rash guards;

Beach footwear; Beach shoes; Sandals and beach shoes; Skiing shoes;

Clothes; Sport coats; Sport shirts; Sports jackets; Sports jerseys and

breeches for sports; Sports pants; Sports vests; Athletic apparel,

namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms;

Bottoms [clothing]; Clothing for athletic use, namely, padded pants;

Clothing for athletic use, namely, padded shirts; Clothing for athletic use,

namely, padded shorts; Triathlon clothing, namely, triathlon tights,

triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits;

pullovers; Shirts; Pants; Ski wear; Surf wear; Waterproof leather shoes

and boots; Waterproof footwear; Ski suits; Ski suits for competition;

Snow boarding suits; Skirt suits; Waterproof jackets and pants; Skating

outfits; Cyclists' jerseys; Vested suits; Rash vests; Sports vests; Beach

sandals; Bath slippers; sports shoes; ski boots; ski gloves; Leisurewear.

Class 28 Swim fins; Paddle board fins; Surf fins; Scuba fins; Flippers for

swimming; Fins for body boards; Inflatable swimming pools [play

articles]; Play swimming pools; Boards used in the practice of water

sports; Body boards; Paddle boards; Flutter boards; Kick board flotation

devices for recreational use; Kite boards; Swimming boards; Swimming

kick boards; Surf boards; Swim boards for recreational use; Floats for

bathing and swimming; Air mattress swimming floats for recreational

use; Inflatable float mattresses or pads for recreational use; Inflatable

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float hammocks for recreational use in water; Swim floats for recreational

use; Pool rings; Foam floats; Arm floats for recreational use; surfboards;

swimming webs [flippers]; Water wings; Water wing swim aids for

recreational use; Floating recreational lounge chairs; Swimming belts;

Swimming jackets; Head band [sports articles]; Waist bands; Waist

trimmer exercise belts [sports articles]; Knee guards for athletic use; shin

guards [sports articles]; Shin guards for athletic use; Protective supports

for shoulders and elbows [sports articles]; Arm guards for athletic use;

elbow guards [sports articles]; Sports equipment for boxing and martial

arts, namely, boxing gloves, boxing bags, punching mitts, belly

protectors, groin protectors and shin guards; Portable support structures

for dance and other exercises; Athletic equipment, namely, guards for

the mouth, the nose, the chin; Chest protectors for sports; men's athletic

supporters [sports articles]; Wrist supports [sports articles]; Athletic

sporting goods, namely, athletic wrist and joint supports; Elbow guards

for athletic use; Floating bed; ice skates; Exercise bands; Training bars;

Rowing machines; Body-training apparatus; Stationary exercise bicycles

and rollers therefor; Exercise equipment, namely, manually operated

jogging machines; Exercise equipment, namely, stair-stepping

machines; Exercise equipment, namely, chest expanders; Exercise

machines; Exercising equipment, namely, weight lifting machines;

Fitness machines and equipment, namely, weights, treadmills, rowing

machines, stair stepping machines, resistance machines, stationary

cycles.

2. The First Application was published for opposition purposes on 10 August 2018.

3. On 2 October 2018, the applicant applied to register the trade mark shown on the

cover page of this decision in the UK for the following goods (“the Second

Application”):

Class 18 Bags for climbers; bags for campers; bags for sports; beach bags;

compression cubes adapted for luggage; garment bags for travel; grips

for holding shopping bags; handbags; haversacks; rucksacks /

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backpacks; saddlebags; shopping bags; leather shoulder belts; tool

bags, empty; travelling trunks; travelling bags; vanity cases, not fitted;

wheeled shopping bags.

4. The Second Application was published for opposition purposes on 12 October 2018.

5. On 12 November 2018 and 10 January 2019 respectively, the applications were

opposed by Kona USA, Inc. (“the opponent”) based upon sections 5(2)(b), 5(3) and

5(4)(a) of the Trade Marks Act 1994 (“the Act”). For its opposition based upon sections

5(2)(b) and 5(3) of the Act, the opponent relies upon the following marks:

KONA

UK registration no. 1379481

Filing date 7 April 1989; registration date 6 July 1990

Priority date claimed 11 October 1988 (Canada)

Relying on all goods for which the mark is registered, namely:

Class 12 Bicycles included in Class 12.

(“the First Earlier Mark”)

KONA

EUTM no. 311449

Filing date 29 July 1996; registration date 25 May 1998

Relying on all goods for which the mark is registered, namely:

Class 12 Bicycles and parts therefor.

(“the Second Earlier Mark”)

6. Under section 5(2)(b), the opponent claims that there is a likelihood of confusion

because the respective marks are similar, and the goods are identical or similar.

7. Under section 5(3), the opponent claims that it has a reputation for all goods for

which the mark is registered and that use of the applicant’s marks would, without due

cause, take unfair advantage of, or be detrimental to, the distinctive character and/or

repute of the earlier marks.

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8. Under section 5(4)(a), the opponent claims that the sign KONA has been used

throughout the UK since at least December 1990 in respect of the following goods:

“Bicycles, bicycle parts, cycling clothing and bicycle accessories, clothing,

jackets, cycling shorts, cycling bibs and other clothing for cycling, headgear,

caps, hats, gloves, socks, pedals, bags, bicycle handlebars and sterns, grips,

saddles, seat posts and clamps, toolkits for bicycles, parts and fittings for all the

aforesaid goods.”

9. The applicant filed counterstatements denying the claims made. The applicant did

not request proof of use of the earlier marks.

10. On 4 April 2019, the Registry confirmed that the proceedings were to be

consolidated pursuant to section 62(1)(g) of the Act.

11. The opponent is represented by Wiggin LLP and the applicant is represented by

Adamson Jones. The opponent filed evidence in the form of the witness statement of

Daniel Gerhard dated 19 March 2019. The applicant filed evidence in the form of the

witness statement of Sri Dhevi Santhana Dass dated 16 July 2019. No evidence in

reply was filed by the opponent. No hearing was requested, and both parties filed

written submissions in lieu. This decision is taken following a careful perusal of the

papers.

EVIDENCE Opponent’s Evidence 12. As noted above, the opponent’s evidence consists of the witness statement of Mr

Gerhard dated 19 March 2019. This was accompanied by 29 exhibits. Mr Gerhard is

the President of the opponent, a position he has held since 1989 when he co-founded

the business. I have read Mr Gerhard’s evidence in its entirety and, in particular, I note

as follows:

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a. The opponent was founded in the USA in 1989 and has distributed its KONA

products to the UK and Europe since 1990.1

b. The opponent has distributed product catalogues in the UK since 1990.2

c. Mr Gerhard has provided invoices from the opponent’s factory in Taiwan to

its UK distributor dated 23 November 2005, 24 October 2008, 29 May 2009 and

3 March 2010.3 The invoices are all headed as being “KONA” bicycles, but the

actual product descriptions do not describe them as KONA.

d. Mr Gerhard has provided invoices addressed to Chain Reaction Cycles,

Evans Cycles and Wiggle Ltd dated between 12 June 2014 and 6 October

2017.4 They amount to sales of over £850,000 and 1,082 units. The invoices

all display the following mark, but do not display the mark KONA in the product

descriptions:

e. Mr Gerhard has provided a list of 46 UK retailers which he states stock KONA

products.5

f. Mr Gerhard states that more than 200,000 bicycles have been sold in the UK

since 1990.6

g. The website www.konaworld.uk.com is specifically targeted at the UK market

and screenshots of the website dating back to 2002 have been provided (the

1 Witness statement of Daniel Gerhard, para. 9 and 15 2 Witness statement of Daniel Gerhard, para. 18 and Exhibit DG4 3 Exhibit DG5 4 Exhibit DG6 5 Witness statement of Daniel Gerhard, para. 20 and Exhibit DG7 6 Witness statement of Daniel Gerhard, para. 21

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screenshots are too small for the text itself to be legible).7 The following marks

are visible on the website:

h. Mr Gerhard has provided a print out from the website

shop.bikesandbuddies.co.uk, which displays bikes described as KONA

bicycles in the product description.8 However, this is undated and Mr Gerhard

confirms that the screenshots were taken on 6 March 2019.9

i. Mr Gerhard states that between 1996 and 6 January 2018, a total of

34.6million visits were made to www.konaworld.com, 7.95% of which were from

UK users (which amounts to approximately 2.7million UK visits).10 Between 1

August 2017 and 1 May 2018, 106,448 visits were made to the website

www.konaworld.com from the UK.11

j. Mr Gerhard has provided the following UK sales figures for all goods sold

under the KONA mark:

2004 £11,486,800 2005 £13,444,600

2006 £18,811,000 2007 £16,346,200

2008 £16,785,600 2009 £15,753,400

2010 £10,735,400 2011 £10,764,000

2012 £2,761,143 2013 £3,295,369

2014 £4,172,387 2015 £3,412,547

2016 £4,995,671 2017 £5,322,894

7 Exhibit DG9 8 Exhibit DG11 9 Witness statement of Daniel Gerhard, para. 27 10 Witness statement of Daniel Gerhard, para. 28 11 Witness statement of Daniel Gerhard, para. 29

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k. Mr Gerhard has provided the following UK advertising and promotional

expenditure for goods sold under the KONA mark:

2004 £172,302 2005 £201,669

2006 £282,165 2007 £245,193

2008 £251,784 2009 £236,301

2010 £161,031 2011 £161,460

2012 £89,138 2013 £73,400

2014 £78,301 2015 £80,546

2016 £101,895 2017 £99,841

l. The opponent operates a blog which was established in September 2009. As

at 6 January 2019, 2000 stories had been posted to the blog. Users from the

UK were responsible for 543,000 sessions.12

m. The opponent’s bikes display the mark KONA presented in the following

way:13

n. The opponent sponsored a series of cycling films which were distributed

worldwide, including in the UK, since 2000. A proportion of these films have

been distributed on YouTube and Vimeo, receiving a combined total of

approximately 500,000 views worldwide. Mr Gerhard states that a “large”

proportion of these viewers are from the UK, but does not provide a figure.14

12 Witness statement of Daniel Gerhard, para. 40 13 Exhibit DG20 14 Witness statement of Daniel Gerhard, para. 48 and 49

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o. The opponent currently sponsors 16 athletes who compete in various cycling

disciplines.15 Mr Gerhard has provided images of athletes wearing KONA

branded clothing and riding KONA branded bicycles in various

championships.16

Applicant’s Evidence 13. As noted above, the applicant’s evidence consists of the witness statement of Ms

Dass, which was accompanied by 7 exhibits. Ms Dass is the trade mark attorney acting

on behalf of the applicant. I have read Ms Dass’ evidence in its entirety. As the

evidence filed by the applicant goes specifically to the similarity of goods and

distinctive character of the earlier marks, I will address these points below where

appropriate.

DECISION Section 5(2)(b) 14. Section 5(2)(b) of the Act reads as follows:

“5(2) A trade mark shall not be registered if because –

(a)…

(b) it is similar to an earlier trade mark and is to be registered for goods

or services identical with or similar to those for which the earlier trade

mark is protected

15 Witness statement of Daniel Gerhard, para. 54 16 Exhibit DG28

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there exists a likelihood of confusion on the part of the public, which includes

the likelihood of association with the earlier trade mark.”

15. An earlier trade mark is defined in section 6 of the Act, the relevant parts of which

state:

“6(1) In this Act an “earlier trade mark” means –

(a) a registered trade mark, an international trade mark (UK) or

Community trade mark or international trade mark (EC) which has a date

of application for registration earlier than that of the trade mark in

question, taking account (where appropriate) of the priorities claimed in

respect of the trade marks

(2) References in this Act to an earlier trade mark include a trade mark in

respect of which an application for registration has been made and which, if

registered, would be an earlier trade mark by virtue of subsection (1)(a) or (b)

subject to its being so registered.”

16. The opponent’s marks qualify as earlier trade marks under the above provisions.

As the earlier marks had completed their registration process more than 5 years before

the publication date of the applications in issue, they are subject to proof of use

pursuant to section 6A of the Act. However, as the applicant did not request proof of

use, the opponent is entitled to rely upon all of the goods it has identified.

17. The following principles are gleaned from the decisions of the EU courts in Sabel

BV v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer

Inc, Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case

C-342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98,

Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson Multimedia

Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato & C. Sas v

OHIM, Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P.

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(a) The likelihood of confusion must be appreciated globally, taking account of

all relevant factors;

(b) the matter must be judged through the eyes of the average consumer of the

goods or services in question, who is deemed to be reasonably well informed

and reasonably circumspect and observant, but who rarely has the chance to

make direct comparisons between marks and must instead rely upon the

imperfect picture of them he has kept in his mind, and whose attention varies

according to the category of goods or services in question;

(c) the average consumer normally perceives a mark as a whole and does not

proceed to analyse its various details;

(d) the visual, aural and conceptual similarities of the marks must normally be

assessed by reference to the overall impressions created by the marks bearing

in mind their distinctive and dominant components, but it is only when all other

components of a complex mark are negligible that it is permissible to make the

comparison solely on the basis of the dominant elements;

(e) nevertheless, the overall impression conveyed to the public by a composite

trade mark may be dominated by one or more of its components;

(f) however, it is also possible that in a particular case an element

corresponding to an earlier trade mark may retain an independent distinctive

role in a composite mark, without necessarily constituting a dominant element

of that mark;

(g) a lesser degree of similarity between the goods or services may be offset

by a great degree of similarity between the marks, and vice versa;

(h) there is a greater likelihood of confusion where the earlier mark has a highly

distinctive character, either per se or because of the use that has been made

of it;

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(i) mere association, in the strict sense that the later mark brings to mind the

earlier mark, is not sufficient;

(j) the reputation of a mark does not give grounds for presuming a likelihood of

confusion simply because of a likelihood of association in the strict sense;

(k) if the association between the marks creates a risk that the public will

wrongly believe that the respective goods or services come from the same or

economically-linked undertakings, there is a likelihood of confusion.

Comparison of goods 18. The competing goods are as follows:

Opponent’s goods Applicant’s goods The First Earlier Mark Class 12

Bicycles included in Class 12.

The Second Earlier Mark Class 12

Bicycles and parts therefor.

The First Application Class 25

Sports caps and hats; Bathing caps;

Swimming caps; Swim wear; Swim wear

for gentlemen and ladies; Bathing trunks;

Bathing suits; Bathing suits for men;

Parts of clothing, namely, gussets for

tights, gussets for stockings, gussets for

bathing suits, gussets for underwear,

gussets for leotards and gussets for

footlets; Swimsuits; Bathing costumes;

Survival suits, namely, insulated overall

wet suits and dry suits; Rash guards;

Beach footwear; Beach shoes; Sandals

and beach shoes; Skiing shoes; Clothes;

Sport coats; Sport shirts; Sports jackets;

Sports jerseys and breeches for sports;

Sports pants; Sports vests; Athletic

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apparel, namely, shirts, pants, jackets,

footwear, hats and caps, athletic

uniforms; Bottoms [clothing]; Clothing for

athletic use, namely, padded pants;

Clothing for athletic use, namely, padded

shirts; Clothing for athletic use, namely,

padded shorts; Triathlon clothing,

namely, triathlon tights, triathlon shorts,

triathlon singlets, triathlon shirts, triathlon

suits; pullovers; Shirts; Pants; Ski wear;

Surf wear; Waterproof leather shoes and

boots; Waterproof footwear; Ski suits;

Ski suits for competition; Snow boarding

suits; Skirt suits; Waterproof jackets and

pants; Skating outfits; Cyclists' jerseys;

Vested suits; Rash vests; Sports vests;

Beach sandals; Bath slippers; sports

shoes; ski boots; ski gloves;

Leisurewear.

Class 28

Swim fins; Paddle board fins; Surf fins;

Scuba fins; Flippers for swimming; Fins

for body boards; Inflatable swimming

pools [play articles]; Play swimming

pools; Boards used in the practice of

water sports; Body boards; Paddle

boards; Flutter boards; Kick board

flotation devices for recreational use;

Kite boards; Swimming boards;

Swimming kick boards; Surf boards;

Swim boards for recreational use; Floats

for bathing and swimming; Air mattress

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swimming floats for recreational use;

Inflatable float mattresses or pads for

recreational use; Inflatable float

hammocks for recreational use in water;

Swim floats for recreational use; Pool

rings; Foam floats; Arm floats for

recreational use; surfboards; swimming

webs [flippers]; Water wings; Water wing

swim aids for recreational use; Floating

recreational lounge chairs; Swimming

belts; Swimming jackets; Head band

[sports articles]; Waist bands; Waist

trimmer exercise belts [sports articles];

Knee guards for athletic use; shin guards

[sports articles]; Shin guards for athletic

use; Protective supports for shoulders

and elbows [sports articles]; Arm guards

for athletic use; elbow guards [sports

articles]; Sports equipment for boxing

and martial arts, namely, boxing gloves,

boxing bags, punching mitts, belly

protectors, groin protectors and shin

guards; Portable support structures for

dance and other exercises; Athletic

equipment, namely, guards for the

mouth, the nose, the chin; Chest

protectors for sports; men's athletic

supporters [sports articles]; Wrist

supports [sports articles]; Athletic

sporting goods, namely, athletic wrist

and joint supports; Elbow guards for

athletic use; Floating bed; ice skates;

Exercise bands; Training bars; Rowing

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machines; Body-training apparatus;

Stationary exercise bicycles and rollers

therefor; Exercise equipment, namely,

manually operated jogging machines;

Exercise equipment, namely, stair-

stepping machines; Exercise equipment,

namely, chest expanders; Exercise

machines; Exercising equipment,

namely, weight lifting machines; Fitness

machines and equipment, namely,

weights, treadmills, rowing machines,

stair stepping machines, resistance

machines, stationary cycles.

The Second Application Class 18

Bags for climbers; bags for campers;

bags for sports; beach bags;

compression cubes adapted for luggage;

garment bags for travel; grips for holding

shopping bags; handbags; haversacks;

rucksacks / backpacks; saddlebags;

shopping bags; leather shoulder belts;

tool bags, empty; travelling trunks;

travelling bags; vanity cases, not fitted;

wheeled shopping bags.

19. When making the comparison, all relevant factors relating to the goods and

services in the specifications should be taken into account. In the judgment of the

Court of Justice of the European Union (“CJEU”) in Canon, Case C-39/97, the court

stated at paragraph 23 that:

“In assessing the similarity of the goods or services concerned, as the French

and United Kingdom Governments and the Commission have pointed out, all

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the relevant factors relating to those goods or services themselves should be

taken into account. Those factors include, inter alia, their nature, their intended

purpose and their method of use and whether they are in competition with each

other or are complementary.”

20. Guidance on this issue has also come from Jacob J. (as he then was) in the Treat

case, [1996] R.P.C. 281, where he identified the factors for assessing similarity as:

(a) The respective uses of the respective goods or services;

(b) The respective users of the respective goods or services;

(c) The physical nature of the goods or acts of service;

(d) The respective trade channels through which the goods or services reach

the market;

(e) In the case of self-serve consumer items, where in practice they are

respectively found or likely to be found in supermarkets and, in particular,

whether they are or are likely to be found on the same or different shelves;

(f) The extent to which the respective goods or services are competitive. This

inquiry may take into account how those in trade classify goods, for instance,

whether market research companies, who of course act for industry, put the

goods or services in the same or different sectors.

21. In YouView TV Ltd v Total Ltd, [2012] EWHC 3158 (Ch), Floyd J. (as he then was)

stated that:

“… Trade mark registrations should not be allowed such a liberal interpretation

that their limits become fuzzy and imprecise: see the observations of the CJEU

in Case C-307/10 The Chartered Institute of Patent Attorneys (Trademarks) (IP

TRANSLATOR) [2012] ETMR 42 at [47]-[49]. Nevertheless the principle should

not be taken too far. Treat was decided the way it was because the ordinary

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and natural, or core, meaning of ‘dessert sauce’ did not include jam, or because

the ordinary and natural description of jam was not ‘a dessert sauce’. Each

involved a straining of the relevant language, which is incorrect. Where words

or phrases in their ordinary and natural meaning are apt to cover the category

of goods in question, there is equally no justification for straining the language

unnaturally so as to produce a narrow meaning which does not cover the goods

in question.”

22. In Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and

Another, [2000] F.S.R. 267 (HC), Neuberger J. (as he then was) stated that:

“I should add that I see no reason to give the word “cosmetics” and “toilet

preparations”… anything other than their natural meaning, subject, of course,

to the normal and necessary principle that the words must be construed by

reference to their context.”

Class 25

23. The applicant has filed printouts from various websites which show clothing and

bicycles listed under separate subheadings.17 In its written submissions in lieu, the

applicant states:

“11. As can be seen in the exhibits, the goods offered for sale are set out in

various categories on the home pages of each website. As the customer

chooses each category, it takes them to the respective product pages. The

opponent’s goods are never featured in the same category with the opposed

goods. These opposed goods are also not available together in the respective

shops in the same shelves or display spaces as the prior goods.”

24. Whilst I accept that these goods may not be available in the same section of a

shop, it is not uncommon for manufacturers of items for a particular sport (such as

bicycles) to also produce clothing that may be worn whilst participating in that activity.

17 Exhibits SDSD01 to SDSD05

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In this case, for example, it would not be unusual for bicycle manufacturers to produce

clothing for cyclists. The goods will, therefore, overlap in trade channels. Indeed, this

seems to be supported by the applicant’s evidence which does demonstrate the goods

being sold in the same stores. Similarly, cyclists who purchase bicycles would also

purchase specialist clothing to wear whilst using the bicycle. There will, therefore, be

overlap in users. The nature, method of use and purpose of the goods clearly differ. I,

therefore, consider the following goods in the applicant’s specification to be similar to

the opponent’s goods to a low to medium degree:

Sports caps and hats; Parts of clothing, namely, gussets for tights, gussets for

stockings, […] gussets for underwear, gussets for leotards and gussets for

footlets; Rash guards; Clothes; Sport coats; Sport shirts; Sports jackets; Sports

jerseys and breeches for sports; Sports pants; Sports vests; Athletic apparel,

namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms;

Bottoms [clothing]; Clothing for athletic use, namely, padded pants; Clothing for

athletic use, namely, padded shirts; Clothing for athletic use, namely, padded

shorts; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon

singlets, triathlon shirts, triathlon suits; pullovers; Shirts; Pants; Waterproof

leather shoes and boots; Waterproof footwear; Waterproof jackets and pants;

Cyclists' jerseys; Vested suits; Rash vests; Sports vests; sports shoes;

Leisurewear.

25. The following goods in the applicant’s specification cannot be said to cover goods

that might be used during cycling activities. There will not, therefore, be the same

overlap in trade channels. I recognise that both parties’ goods will be used by members

of the public generally, but this is not sufficient for a finding of similarity. Consequently,

I consider the following goods to be dissimilar to the opponent’s goods:

Bathing caps; Swimming caps; Swim wear; Swim wear for gentlemen and

ladies; Bathing trunks; Bathing suits; Bathing suits for men; Parts of clothing,

[…] gussets for bathing suits; Swimsuits; Bathing costumes; Survival suits,

namely, insulated overall wet suits and dry suits; Beach footwear; Beach shoes;

Sandals and beach shoes; Skiing shoes; Ski wear; Surf wear; Ski suits; Ski

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suits for competition; Snow boarding suits; Skirt suits; Skating outfits; Beach

sandals; Bath slippers; ski boots; ski gloves.

Class 28

26. Again, it is not uncommon for manufacturers of bicycles to also produce and sell

protective clothing and equipment to be worn or used whilst cycling. Consequently,

the following goods will overlap in user and trade channels with the opponent’s goods

and will, therefore, be similar to a low to medium degree:

Head band [sports articles]; Waist bands; Waist trimmer exercise belts [sports

articles]; Knee guards for athletic use; shin guards [sports articles]; Shin guards

for athletic use; Protective supports for shoulders and elbows [sports articles];

Arm guards for athletic use; elbow guards [sports articles]; Athletic equipment,

namely, guards for the mouth, the nose, the chin; Chest protectors for sports;

men's athletic supporters [sports articles]; Wrist supports [sports articles];

Athletic sporting goods, namely, athletic wrist and joint supports; Elbow guards

for athletic use.

27. The following goods in the applicant’s specification cannot be said to cover goods

that might be used during cycling activities. They will not, therefore, overlap in trade

channels. I recognise that both parties’ goods may overlap in user to the extent that

they will both be used by members of the general public, but that is not sufficient for a

finding of similarity. I consider the following goods in the applicant’s specification to be

dissimilar to the opponent’s goods:

Swim fins; Paddle board fins; Surf fins; Scuba fins; Flippers for swimming; Fins

for body boards; Inflatable swimming pools [play articles]; Play swimming pools;

Boards used in the practice of water sports; Body boards; Paddle boards;

Flutter boards; Kick board flotation devices for recreational use; Kite boards;

Swimming boards; Swimming kick boards; Surf boards; Swim boards for

recreational use; Floats for bathing and swimming; Air mattress swimming

floats for recreational use; Inflatable float mattresses or pads for recreational

use; Inflatable float hammocks for recreational use in water; Swim floats for

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recreational use; Pool rings; Foam floats; Arm floats for recreational use;

surfboards; swimming webs [flippers]; Water wings; Water wing swim aids for

recreational use; Floating recreational lounge chairs; Swimming belts;

Swimming jackets; Sports equipment for boxing and martial arts, namely,

boxing gloves, boxing bags, punching mitts, belly protectors, groin protectors

and shin guards; Portable support structures for dance and other exercises;

Floating bed; ice skates; Exercise bands; Training bars; Rowing machines.

28. “Body-training apparatus”, “stationary exercise bicycles and rollers therefor”,

“exercise machines” and “fitness machines and equipment, namely, […] stationary

cycles” in the applicant’s specification all cover stationary exercise bicycles. These

goods overlap in nature and method of use with the opponent’s goods. They will

overlap in user as professional cyclists and/or members of the public who cycle as a

hobby may purchase stationary exercise bicycles to use for training purposes or when

the weather is not suitable for outdoor cycling. I also recognise that it is possible that

the average consumer will perceive an overlap in trade channels as bicycle

manufacturers may also produce exercise bicycles for training use. I consider these

goods to be similar to at least a medium degree.

29. The following goods in the applicant’s specification are exercise machines that do

not include stationary exercise bicycles:

Exercise equipment, namely, manually operated jogging machines; Exercise

equipment, namely, stair-stepping machines; Exercise equipment, namely,

chest expanders; Exercising equipment, namely, weight lifting machines;

Fitness machines and equipment, namely, weights, treadmills, rowing

machines, stair stepping machines, resistance machines […].

Consequently, the same overlap in method of use, nature and trade channels will not

apply. I recognise that there may remain a degree of overlap in user to the extent that

members of the general public may use both exercise machines and bicycles, but I do

not consider that sufficient for a finding of similarity. I also do not consider that these

goods would be in competition. I consider the goods to be dissimilar.

21

Class 18

30. The applicant’s class 18 goods are various types of bags and luggage goods.

These, clearly, differ in nature, purpose and method of use with the opponent’s goods.

I recognise that both bicycles and bags may overlap in user to the extent that both

may be purchased by members of the general public, but this is not sufficient for a

finding of similarity. I recognise that there may be a degree of overlap between “bags

for sports” and “saddlebags” in the applicant’s specification and the opponent’s goods.

Both may be purchased from specialist sporting, or indeed cycling, retailers. The

overlap in terms of user is also higher than for bags generally because both may be

used by professional cyclists or members of the general public who cycle as a hobby.

I therefore consider there to be a low to medium degree of similarity between the

goods.

31. The same overlap in trade channels will not apply to the following goods as these

terms do not cover bags that would be used whilst cycling. Consequently, I consider

the following goods in the applicant’s specification to be dissimilar to the opponent’s

goods:

Bags for climbers; bags for campers; beach bags; compression cubes adapted

for luggage; garment bags for travel; grips for holding shopping bags;

handbags; haversacks; rucksacks / backpacks; shopping bags; leather

shoulder belts; tool bags, empty; travelling trunks; travelling bags; vanity cases,

not fitted; wheeled shopping bags.

32. As some degree of similarity between the goods is necessary to engage the test

for likelihood of confusion, the opposition under section 5(2)(b) must fail in respect of

the following goods:18

Class 18 Bags for climbers; bags for campers; beach bags; compression cubes

adapted for luggage; garment bags for travel; grips for holding shopping

bags; handbags; haversacks; rucksacks / backpacks; shopping bags;

18 eSure Insurance v Direct Line Insurance, [2008] ETMR 77 CA

22

leather shoulder belts; tool bags, empty; travelling trunks; travelling

bags; vanity cases, not fitted; wheeled shopping bags.

Class 25 Bathing caps; Swimming caps; Swim wear; Swim wear for gentlemen

and ladies; Bathing trunks; Bathing suits; Bathing suits for men; Parts of

clothing, […] gussets for bathing suits; Swimsuits; Bathing costumes;

Survival suits, namely, insulated overall wet suits and dry suits; Beach

footwear; Beach shoes; Sandals and beach shoes; Skiing shoes; Ski

wear; Surf wear; Ski suits; Ski suits for competition; Snow boarding suits;

Skirt suits; Skating outfits; Beach sandals; Bath slippers; ski boots; ski

gloves.

Class 28 Swim fins; Paddle board fins; Surf fins; Scuba fins; Flippers for

swimming; Fins for body boards; Inflatable swimming pools [play

articles]; Play swimming pools; Boards used in the practice of water

sports; Body boards; Paddle boards; Flutter boards; Kick board flotation

devices for recreational use; Kite boards; Swimming boards; Swimming

kick boards; Surf boards; Swim boards for recreational use; Floats for

bathing and swimming; Air mattress swimming floats for recreational

use; Inflatable float mattresses or pads for recreational use; Inflatable

float hammocks for recreational use in water; Swim floats for recreational

use; Pool rings; Foam floats; Arm floats for recreational use; surfboards;

swimming webs [flippers]; Water wings; Water wing swim aids for

recreational use; Floating recreational lounge chairs; Swimming belts;

Swimming jackets; Sports equipment for boxing and martial arts,

namely, boxing gloves, boxing bags, punching mitts, belly protectors,

groin protectors and shin guards; Portable support structures for dance

and other exercises; Floating bed; ice skates; Exercise bands; Training

bars; Rowing machines; Exercise equipment, namely, manually

operated jogging machines; Exercise equipment, namely, stair-stepping

machines; Exercise equipment, namely, chest expanders; Exercising

equipment, namely, weight lifting machines; Fitness machines and

equipment, namely, weights, treadmills, rowing machines, stair stepping

machines, resistance machines […].

23

The average consumer and the nature of the purchasing act 33. As the case law above indicates, it is necessary for me to determine who the

average consumer is for the respective parties’ goods. I must then determine the

manner in which the goods are likely to be selected by the average consumer. In

Hearst Holdings Inc, Fleischer Studios Inc v A.V.E.L.A. Inc, Poeticgem Limited, The

Partnership (Trading) Limited, U Wear Limited, J Fox Limited, [2014] EWHC 439 (Ch),

Birss J described the average consumer in these terms:

“60. The trade mark questions have to be approached from the point of view of

the presumed expectations of the average consumer who is reasonably well

informed and reasonably circumspect. The parties were agreed that the

relevant person is a legal construct and that the test is to be applied objectively

by the court from the point of view of that constructed person. The words

“average” denotes that the person is typical. The term “average” does not

denote some form of numerical mean, mode or median.”

34. I consider that the average consumer for the goods will be either professional

cyclists or members of the general public who participate in cycling activities as a

hobby. The goods will vary in cost and frequency of purchase (from exercise bicycles

and bicycles that will be fairly expensive and purchased infrequently to sports clothing

which may be of lower cost and purchased more frequently). However, even for lower

cost items various factors will be taken into consideration such as material, suitability

for use whilst cycling and performance. Consequently, I consider that at least a

medium degree of attention will be paid during the purchasing process for the goods.

35. The goods are most likely to be obtained by self-selection from a retail outlet or

online or catalogue equivalent. Visual considerations are, therefore, likely to dominate

the selection process. However, I do not discount that there will also be an aural

component to the purchase of the goods, as advice may be sought from a sales

assistant or representative.

24

Comparison of the trade marks 36. It is clear from Sabel BV v. Puma AG (particularly paragraph 23) that the average

consumer normally perceives a trade mark as a whole and does not proceed to

analyse its various details. The same case also explains that the visual, aural and

conceptual similarities of the trade marks must be assessed by reference to the overall

impressions created by the trade marks, bearing in mind their distinctive and dominant

components. The CJEU stated, at paragraph 34 of its judgment in Case C-591/12P,

Bimbo SA v OHIM, that:

“… it is necessary to ascertain, in each individual case, the overall impression

made on the target public by the sign for which registration is sought, by means

of, inter alia, an analysis of the components of a sign and of their relative weight

in the perception of the target public, and then, in the light of that overall

impression and all factors relevant to the circumstances of the case, to assess

the likelihood of confusion.”

37. It would be wrong, therefore, to artificially dissect the trade marks, although it is

necessary to take into account the distinctive and dominant components of the marks

and to give due weight to any other features which are not negligible and therefore

contribute to the overall impressions created by the marks.

38. The respective trade marks are shown below:

Opponent’s trade marks Applicant’s trade marks

KONA

25

39. The opponent’s trade marks consist of the word KONA. There are no other

elements to contribute to the overall impression which lies in the word itself. The

applicant’s trade marks consist of the word KONA and the number 81, presented in a

stylised font. It is the text itself that plays the greater role in the overall impression of

the mark, with the stylisation playing a lesser role.

40. Visually, the marks overlap in the presence of the word KONA. The points of visual

difference are the addition of the number 81 and the stylisation in the applicant’s trade

marks, which have no counterpart in the opponent’s trade marks. However, I note that

the opponent’s trade marks, as word only marks, may be used in any standard

typeface. Consequently, I consider the marks to be visually similar to a medium

degree.

41. Aurally, the marks overlap in the pronunciation of the word KONA, which will be

identical in both marks. They differ in the presence of the number 81 in the applicant’s

marks which have no counterpart in the opponent’s marks. I consider the marks to be

aurally similar to a higher than medium degree.

42. Conceptually, the applicant submits that the word KONA means “a southwesterly

winter wind in Hawaii, often strong and bringing rain”. Alternatively, the applicant

submits that it may be recognised as a district in Hawaii. However, I do not consider

that the average consumer in the UK will be aware of this meaning. In my view, it will

be viewed as an invented word with no particular meaning. To this extent, the marks

will be conceptually neutral. The number 81 in the applicant’s marks will, of course, be

recognised as a number and has no counterpart in the opponent’s marks. The

presence of this number, therefore, acts as a point of conceptual difference between

the marks.

Distinctive character of the earlier trade mark 43. In Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, Case C-342/97 the

CJEU stated that:

26

“22. In determining the distinctive character of a mark and, accordingly, in

assessing whether it is highly distinctive, the national court must make an

overall assessment of the greater or lesser capacity of the mark to identify the

goods or services for which it has been registered as coming from a particular

undertaking, and thus to distinguish those goods or services from those of other

undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-

108/97 and C-109/97 Windsurfing Chiemsee v Huber and Attenberger [1999]

ECR 1-2779, paragraph 49).

23. In making that assessment, account should be taken, in particular, of the

inherent characteristics of the mark, including the fact that it does or does not

contain an element descriptive of the goods or services for which it has been

registered; the market share held by the mark; how intensive, geographically

widespread and long-standing use of the mark has been; the amount invested

by the undertaking in promoting the mark; the proportion of the relevant section

of the public which, because of the mark, identifies the goods or services as

originating from a particular undertaking; and statements from chambers of

commerce and industry or other trade and professional associations (see

Windsurfing Chiemsee, paragraph 51).”

44. Registered trade marks possess varying degrees of inherent distinctive character,

ranging from the very low, because they are suggestive or allusive of a characteristic

of the goods or services, to those with high inherent distinctive character, such as

invented words which have no allusive qualities. A mark’s distinctive character may be

enhanced by virtue of the use made of it.

45. The opponent’s marks consist of an invented word – KONA. As explained above,

I do not consider that the average consumer in the UK would attribute any particular

meaning to this word. It has no connection with the goods for which the marks are

registered. I consider the marks to have a high degree of inherent distinctive character.

27

46. The applicant has filed evidence to show that there are a number of results on

Amazon when a search is undertaken for KONA clothing.19 However, a number of the

results produced appear to show products that originate from the opponent and some

do not appear to relate to goods sold under the mark KONA at all. In any event, I do

not consider this evidence to be sufficient to impact upon the distinctive character of

the opponent’s marks.

47. The opponent has been using its mark in the UK since 1990. Since that date, the

opponent’s evidence is that it has sold more than 200,000 bicycles in the UK. That

amounts to around 7,000 bicycles per year. Given what must undoubtedly be a

significant market in the UK, I do not consider that this would represent a significant

market share. The opponent has provided sales figures for goods sold under the

KONA mark between 2004 and 2017 which amount to several million pounds each

year. Indeed, the opponent’s evidence is that its highest annual sales were in 2006

when over £18million worth of sales were made. However, as the opponent only

claims to have sold over 200,000 bicycles, these figures presumably relate to a

broader range of goods than just the “bicycles” for which the opponent’s marks are

registered. I recognise that a reasonable amount has been spent on advertising each

year, but it is not clear whether this relates to bicycles only or a broader range of goods.

Taking the evidence as a whole into account, I do not consider that it is sufficient to

demonstrate enhanced distinctive character in the UK for bicycles.

Likelihood of confusion

48. Confusion can be direct or indirect. Direct confusion involves the average

consumer mistaking one mark for the other, while indirect confusion is where the

average consumer realises the marks are not the same but puts the similarity that

exists between the marks and the goods and services down to the responsible

undertakings being the same or related. There is no scientific formula to apply in

determining whether there is a likelihood of confusion; rather, it is a global assessment

where a number of factors need to be borne in mind. The first is the interdependency

principle i.e. a lesser degree of similarity between the respective trade marks may be

19 Exhibit SDSD06 and SDSD07

28

offset by a greater degree of similarity between the respective parties’ goods and

services or vice versa. As I mentioned above, it is necessary for me to keep in mind

the distinctive character of the opponent’s trade marks, the average consumer for the

goods and the nature of the purchasing process. In doing so, I must be alive to the

fact that the average consumer rarely has the opportunity to make direct comparisons

between trade marks and must instead rely upon the imperfect picture of them that he

has retained in his mind.

49. I have found the parties marks to be visually similar to a medium degree and aurally

similar to a higher than medium degree. The marks are conceptually neutral to the

extent that the word KONA has no particular meaning, but the presence of the number

81 in the applicant’s marks acts as a point of conceptual difference between them. I

have identified the average consumer to be a member of the general public who

participates in cycling activities as a hobby or a cycling professional, who will purchase

the goods primarily by visual means (although I do not discount an aural component).

I have concluded that the average consumer will pay at least a medium degree of

attention when selecting the goods. I have found the parties’ goods to range from

being similar to a low to medium degree to similar to at least a medium degree (except

for those that I have found to be dissimilar). I have found the opponent’s mark to have

a high degree of inherent distinctive character.

50. Notwithstanding the principle of imperfect recollection, I consider that there are

sufficient visual differences between the marks to avoid them being mistakenly

recalled as each other. I do not consider that the presence of the number 81 in the

applicant’s mark will be forgotten by the average consumer. I am satisfied that there

is no likelihood of direct confusion. However, taking all of the above factors into

account, I consider that the average consumer will view the marks as originating from

the same or economically linked undertakings. This is particularly the case given that

the word KONA has a high degree of inherent distinctive character. The addition of the

number 81 in the applicant’s mark is likely to be viewed as an alternative mark being

used by the same business. I consider there to be a likelihood of indirect confusion in

respect of those goods that I have found to be similar to at least a low to medium

degree.

29

Section 5(3) 51. I now turn to the opposition based upon section 5(3) of the Act. Section 5(3) states

as follows:

“5(3) A trade mark which -

(a) is identical with or similar to an earlier trade mark, shall not be

registered if, or to the extent that, the earlier trade mark has a reputation

in the United Kingdom (or, in the case of a European Union trade mark

or international trade mark (EC), in the European Union) and the use of

the later mark without due cause would take unfair advantage of, or be

detrimental to, the distinctive character or repute of the earlier trade

mark.”

52. As noted above, the opponent’s marks qualify as earlier marks pursuant to section

6 of the Act.

53. The relevant case law can be found in the following judgments of the CJEU: Case

C-375/97, General Motors, Case 252/07, Intel, Case C-408/01, Addidas-Salomon,

Case C-487/07, L’Oreal v Bellure and Case C-323/09, Marks and Spencer v Interflora.

The law appears to be as follows:

(a) The reputation of a trade mark must be established in relation to the relevant

section of the public as regards the goods or services for which the mark is

registered; General Motors, paragraph 24.

(b) The trade mark for which protection is sought must be known by a significant

part of that relevant public; General Motors, paragraph 26.

(c) It is necessary for the public when confronted with the later mark to make a

link with the earlier reputed mark, which is the case where the public calls the

earlier mark to mind; Adidas Saloman, paragraph 29 and Intel, paragraph 63.

30

(d) Whether such a link exists must be assessed globally taking account of all

relevant factors, including the degree of similarity between the respective marks

and between the goods/services, the extent of the overlap between the relevant

consumers for those goods/services, and the strength of the earlier mark’s

reputation and distinctiveness; Intel, paragraph 42

(e) Where a link is established, the owner of the earlier mark must also establish

the existence of one or more of the types of injury set out in the section, or there

is a serious likelihood that such an injury will occur in the future; Intel, paragraph

68; whether this is the case must also be assessed globally, taking account of

all relevant factors; Intel, paragraph 79.

(f) Detriment to the distinctive character of the earlier mark occurs when the

mark’s ability to identify the goods/services for which it is registered is

weakened as a result of the use of the later mark, and requires evidence of a

change in the economic behaviour of the average consumer of the

goods/services for which the earlier mark is registered, or a serious risk that

this will happen in future; Intel, paragraphs 76 and 77.

(g) The more unique the earlier mark appears, the greater the likelihood that

the use of a later identical or similar mark will be detrimental to its distinctive

character; Intel, paragraph 74.

(h) Detriment to the reputation of the earlier mark is caused when goods or

services for which the later mark is used may be perceived by the public in such

a way that the power of attraction of the earlier mark is reduced, and occurs

particularly where the goods or services offered under the later mark have a

characteristic or quality which is liable to have a negative impact of the earlier

mark; L’Oreal v Bellure NV, paragraph 40.

(i) The advantage arising from the use by a third party of a sign similar to a mark

with a reputation is an unfair advantage where it seeks to ride on the coat-tails

of the senior mark in order to benefit from the power of attraction, the reputation

and the prestige of that mark and to exploit, without paying any financial

31

compensation, the marketing effort expended by the proprietor of the mark in

order to create and maintain the mark's image. This covers, in particular, cases

where, by reason of a transfer of the image of the mark or of the characteristics

which it projects to the goods identified by the identical or similar sign, there is

clear exploitation on the coat-tails of the mark with a reputation (Marks and

Spencer v Interflora, paragraph 74 and the court’s answer to question 1 in

L’Oreal v Bellure).

54. The conditions of section 5(3) are cumulative. Firstly, the opponent must show that

the earlier marks have achieved a level of knowledge/reputation amongst a significant

part of the public. Secondly, it must be established that the level of reputation and the

similarities between the marks will cause the public to make a link between them, in

the sense of the earlier mark being brought to mind by the later mark. Thirdly,

assuming that the first and second conditions have been met, section 5(3) requires

that one or more of the types of damage claimed will occur and/or that use of the

applicant’s marks will, without due cause, take unfair advantage or be detrimental to

the reputation and/or distinctive character of the earlier marks. This will clearly be the

case if the relevant public believes that the parties’ marks are used by the same

undertakings, or that there is an economic connection between the users of those

marks. It is unnecessary for the purposes of section 5(3) that the goods be similar,

although the relative distance between them is one of the factors which must be

assessed in deciding whether the public will make a link between the marks. the

relevant date for the assessment under section 5(3) is the date of the applications i.e.

15 May 2018 and 2 October 2018 respectively.

Reputation 55. In determining whether the opponent has demonstrated a reputation for the

services in issue, it is necessary for me to consider whether its mark will be known by

a significant part of the public concerned with the services. In reaching this decision, I

must take all of the evidence into account including “the market share held by the trade

32

mark, the intensity, geographical extent and duration of use, and the size of the

investment made by the undertakings in promoting it.20”

56. As noted above, the opponent has been using its mark in the UK since 1990 and,

since that date, has sold over 200,000 bicycles. This amounts to around 7,000 bicycles

per year. The opponent has provided no market share figures. However, in what must

undoubtedly be an extensive market in the UK, I do not consider that this represents

a significant market share. It is not clear what proportion of the sales figures provided

by the opponent relate to the goods in issue. Similarly, whilst a reasonable amount

has been spent on advertising each year, it is not clear whether this relates only to the

goods in issue or to the opponent’s broader product range. Taking the evidence as a

whole into account, I am not satisfied that the opponent has demonstrated a reputation

in the UK in relation to bicycles. Consequently, the opposition under section 5(3) fails.

Section 5(4)(a) 57. I now turn to the opposition based upon section 5(4)(a) of the Act. Section 5(4)(a)

states as follows:

“5(4) A trade mark shall not be registered if, or to the extent that, its use in the

United Kingdom is liable to be prevented -

a) by virtue of any rule of law (in particular, the law of passing off)

protecting an unregistered trade mark or other sign used in the course

of trade, or

b) …

A person thus entitled to prevent the use of a trade mark is referred to in this

Act as the proprietor of “an earlier right” in relation to the trade mark”.

20 General Motors, Case C-375/97

33

58. In Discount Outlet v Feel Good UK, [2017] EWHC 1400 IPEC, Her Honour Judge

Melissa Clarke, sitting as a deputy Judge of the High Court, conveniently summarised

the essential requirements of the law of passing off as follows:

“55. The elements necessary to reach a finding of passing off are the ‘classical

trinity' of that tort as described by Lord Oliver in the Jif Lemon case (Reckitt &

Colman Product v Borden [1990] 1 WLR 491 HL, [1990] RPC 341, HL), namely

goodwill or reputation; misrepresentation leading to deception or a likelihood of

deception; and damage resulting from the misrepresentation. The burden is on

the Claimants to satisfy me of all three limbs.

56. In relation to deception, the court must assess whether "a substantial

number" of the Claimants' customers or potential customers are deceived, but

it is not necessary to show that all or even most of them are deceived (per

Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501, [2013] FSR

21).”

59. Whether there has been passing off must be judged at a particular point (or points)

in time. In Advanced Perimeter Systems Limited v Multisys Computers Limited, BL O-

410-11, Daniel Alexander QC, sitting as the Appointed Person, considered the

relevant date for the purposes of section 5(4)(a) of the Act and concluded as follows:

“43. In SWORDERS TM O-212-06 Mr Alan James acting for the Registrar well

summarised the position in s.5(4)(a) proceeding as follows:

“Strictly, the relevant date for assessing whether s.5(4)(a) applies is always the

date of the application for registration or, if there is a priority date, that date: see

Article 4 of Directive 89/104. However, where the applicant has used the mark

before the date of the application it is necessary to consider what the position

would have been at the date of the start of the behaviour complained about,

and then to assess whether the position would have been any different at the

later date when the application was made.””

34

60. There is no suggestion that the applicant has been using its marks prior to the

dates of the applications. The relevant date for assessing whether section 5(4)(a)

applies is, therefore, the dates of the applications which are the subject of these

proceedings i.e. 15 May 2018 and 2 October 2018 respectively.

Goodwill 61. The House of Lords in Inland Revenue Commissioners v Muller & Co’s Margarine

Ltd [1901] AC 217 (HOL) provided the following guidance regarding goodwill:

“What is goodwill? It is a thing very easy to describe, very difficult to define. It

is the benefit and advantage of the good name, reputation and connection of a

business. It is the attractive force which brings in customers. It is the one thing

which distinguishes an old-established business from a new business at its first

start.”

62. In South Cone Incorporated v Jack Bessant, Dominic Greensmith, Kenwyn House

and Gary Stringer (a partnership) [2002] RPC 19 (HC), Pumfrey J. stated:

“27. There is one major problem in assessing a passing off claim on paper, as

will normally happen in the Registry. This is the cogency of the evidence of

reputation and its extent. It seems to me that in any case in which this ground

of opposition is raised the registrar is entitled to be presented with evidence

which at least raises a prima facie case that the opponent's reputation extends

to the goods comprised in the applicant's specification of goods. The

requirements of the objection itself are considerably more stringent that the

enquiry under s.11 of the 1938 Act (see Smith Hayden & Co. Ltd's Application

(OVAX) (1946) 63 R.P.C. 97 as qualified by BALI Trade Mark [1969] R.P.C.

472). Thus the evidence will include evidence from the trade as to reputation;

evidence as to the manner in which the goods are traded or the services

supplied; and so on.

28. Evidence of reputation comes primarily from the trade and the public, and

will be supported by evidence of the extent of use. To be useful, the evidence

35

must be directed to the relevant date. Once raised, the applicant must rebut the

prima facie case. Obviously, he does not need to show that passing off will not

occur, but he must produce sufficient cogent evidence to satisfy the hearing

officer that it is not shown on the balance of probabilities that passing off will

occur.”

63. However, in Minimax GmbH & Co KG v Chubb Fire Limited [2008] EWHC 1960

(Pat) Floyd J. (as he then was) stated that:

“[The above] observations are obviously intended as helpful guidelines as to

the way in which a person relying on section 5(4)(a) can raise a case to be

answered of passing off. I do not understand Pumfrey J to be laying down any

absolute requirements as to the nature of evidence which needs to be filed in

every case. The essential is that the evidence should show, at least prima facie,

that the opponent's reputation extends to the goods comprised in the

application in the applicant's specification of goods. It must also do so as of the

relevant date, which is, at least in the first instance, the date of application.”

64. Goodwill arises as a result of trading activities. It is clear from the opponent’s

evidence that it has been trading in the UK in relation to bicycles. Whilst I do not

consider the extent of that trading to be sufficient to establish enhanced distinctive

character or reputation, taking the evidence as a whole into account, I consider it

sufficient to establish that the opponent has a reasonable degree of goodwill in relation

to bicycles under the sign KONA. I do not consider that it is sufficient to establish

goodwill in relation to any of the broader goods relied upon.

Misrepresentation 65. In Neutrogena Corporation and Another v Golden Limited and Another [1996] RPC

473, Morritt L.J. stated that:

“There is no dispute as to what the correct legal principle is. As stated by Lord

Oliver of Aylmerton in Reckitt & Colman Products Ltd. v. Borden Inc. [1990]

R.P.C. 341 at page 407 the question on the issue of deception or confusion is

36

“is it, on a balance of probabilities, likely that, if the appellants are not

restrained as they have been, a substantial number of members of the

public will be misled into purchasing the defendants' [product] in the

belief that it is the respondents' [product]”

The same proposition is stated in Halsbury's Laws of England 4th Edition Vol.48

para 148. The necessity for a substantial number is brought out also in Saville

Perfumery Ltd. v. June Perfect Ltd. (1941) 58 R.P.C. 147 at page 175; and Re

Smith Hayden's Application (1945) 63 R.P.C. 97 at page 101.”

And later in the same judgment:

“.... for my part, I think that references, in this context, to “more than de minimis”

and “above a trivial level” are best avoided notwithstanding this court's

reference to the former in University of London v. American University of

London (unreported 12 November 1993). It seems to me that such expressions

are open to misinterpretation for they do not necessarily connote the opposite

of substantial and their use may be thought to reverse the proper emphasis and

concentrate on the quantitative to the exclusion of the qualitative aspect of

confusion.”

66. I recognise that the test for misrepresentation is different to that for likelihood of

confusion, namely, that misrepresentation requires “a substantial number of members

of the public are deceived” rather than whether “the average consumer are confused”.

However, as recognised by Lewison L.J. in Marks and Spencer PLC v Interflora, [2012]

EWCA (Civ) 1501, it is doubtful whether the difference between the legal tests will

produce different outcomes. Certainly, I believe that this is the case here. The

differences between the goods that I have found to be dissimilar will be sufficient to

avoid consumers purchasing the applicant’s goods in the mistaken belief that they are

the goods of the opponent. Consequently, the opposition under section 5(4)(a) fails in

respect of those goods that I have found to be dissimilar and succeeds in relation to

those goods that I have found to be similar to at least a low to medium degree.

37

CONCLUSIONS 67. The opposition is successful in relation to the following goods, for which the First

Application is refused:

Class 25 Sports caps and hats; Parts of clothing, namely, gussets for tights,

gussets for stockings, […] gussets for underwear, gussets for leotards

and gussets for footlets; Rash guards; Clothes; Sport coats; Sport shirts;

Sports jackets; Sports jerseys and breeches for sports; Sports pants;

Sports vests; Athletic apparel, namely, shirts, pants, jackets, footwear,

hats and caps, athletic uniforms; Bottoms [clothing]; Clothing for athletic

use, namely, padded pants; Clothing for athletic use, namely, padded

shirts; Clothing for athletic use, namely, padded shorts; Triathlon

clothing, namely, triathlon tights, triathlon shorts, triathlon singlets,

triathlon shirts, triathlon suits; pullovers; Shirts; Pants; Waterproof

leather shoes and boots; Waterproof footwear; Waterproof jackets and

pants; Cyclists' jerseys; Vested suits; Rash vests; Sports vests; sports

shoes; Leisurewear.

Class 28 Head band [sports articles]; Waist bands; Waist trimmer exercise belts

[sports articles]; Knee guards for athletic use; shin guards [sports

articles]; Shin guards for athletic use; Protective supports for shoulders

and elbows [sports articles]; Arm guards for athletic use; elbow guards

[sports articles]; Athletic equipment, namely, guards for the mouth, the

nose, the chin; Chest protectors for sports; men's athletic supporters

[sports articles]; Wrist supports [sports articles]; Athletic sporting goods,

namely, athletic wrist and joint supports; Elbow guards for athletic use;

Body-training apparatus; Stationary exercise bicycles and rollers

therefor; Exercise machines; Fitness machines and equipment, namely,

[…] stationary cycles.

68. The opposition is unsuccessful in relation to the following goods, for which the First

Application can proceed to registration:

38

Class 25 Bathing caps; Swimming caps; Swim wear; Swim wear for gentlemen

and ladies; Bathing trunks; Bathing suits; Bathing suits for men; Parts of

clothing, […] gussets for bathing suits; Swimsuits; Bathing costumes;

Survival suits, namely, insulated overall wet suits and dry suits; Beach

footwear; Beach shoes; Sandals and beach shoes; Skiing shoes; Ski

wear; Surf wear; Ski suits; Ski suits for competition; Snow boarding suits;

Skirt suits; Skating outfits; Beach sandals; Bath slippers; ski boots; ski

gloves.

Class 28 Swim fins; Paddle board fins; Surf fins; Scuba fins; Flippers for

swimming; Fins for body boards; Inflatable swimming pools [play

articles]; Play swimming pools; Boards used in the practice of water

sports; Body boards; Paddle boards; Flutter boards; Kick board flotation

devices for recreational use; Kite boards; Swimming boards; Swimming

kick boards; Surf boards; Swim boards for recreational use; Floats for

bathing and swimming; Air mattress swimming floats for recreational

use; Inflatable float mattresses or pads for recreational use; Inflatable

float hammocks for recreational use in water; Swim floats for recreational

use; Pool rings; Foam floats; Arm floats for recreational use; surfboards;

swimming webs [flippers]; Water wings; Water wing swim aids for

recreational use; Floating recreational lounge chairs; Swimming belts;

Swimming jackets; Sports equipment for boxing and martial arts,

namely, boxing gloves, boxing bags, punching mitts, belly protectors,

groin protectors and shin guards; Portable support structures for dance

and other exercises; Floating bed; ice skates; Exercise bands; Training

bars; Rowing machines; Exercise equipment, namely, manually

operated jogging machines; Exercise equipment, namely, stair-stepping

machines; Exercise equipment, namely, chest expanders; Exercising

equipment, namely, weight lifting machines; Fitness machines and

equipment, namely, weights, treadmills, rowing machines, stair stepping

machines, resistance machines […].

69. The opposition is successful in relation to the following goods, for which the

Second Application is refused:

39

Class 18 Saddlebags; Bags for sports.

70. The opposition is unsuccessful in relation to the following goods, for which the

Second Application can proceed to registration:

Class 18 Bags for climbers; bags for campers; beach bags; compression cubes

adapted for luggage; garment bags for travel; grips for holding shopping

bags; handbags; haversacks; rucksacks / backpacks; shopping bags;

leather shoulder belts; tool bags, empty; travelling trunks; travelling

bags; vanity cases, not fitted; wheeled shopping bags.

COSTS 71. The opponent has enjoyed the greater degree of success in relation to the First

Application and the applicant has enjoyed the greater degree of success in relation to

the Second Application. Consequently, I do not consider it appropriate to make an

award of costs in these proceedings.

Dated this 4th day of February 2020 S WILSON For the Registrar