You say "Aveda", I say "Uveda" ...

Stilts are definitely not
a good place to be ...

Last week's inaugural lecture by Sir Robin Jacob reminded this Kat of the existence of a phrase which was heard a good deal more often in past times than one hears it today: "nonsense on stilts!"  This vivid meta-imagery was coined by Jeremy Bentham and, while the objects of his withering scorn were the concepts of natural law and natural rights, the term might better be deployed today for many an attempted interpretation of non-natural law such as statutes, Regulations and Directives, of which the vast and sprouting corpus of European trade mark law can furnish many a fine example. This Kat would say that it is not actually the official task of national courts and trade mark registries around Europe to pull some of this nonsense off its stilts, bring it down to earth and shape it up into propositions that can be easily understood and applied by ordinary folk, but that does occasionally happen, and Aveda Corporation v Dabur India Ltd [2013] EWHC 589 (Ch) is one such case.

Aveda v Dabur Uveda is a decision of Mr Justice Arnold in the Chancery Division of the High Court, England and Wales, which was published on the Monday of last week. Estée Lauder subsidiary Aveda had registered the word AVEDA as both a UK trade mark and a Community trade mark for goods in a variety of classes, including 'cleaning, polishing, scouring and abrasive preparations' in Class 3. In May 2010 Dabur Uveda applied to register the word mark DABUR UVEDA for 'bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; deodorants for personal use' in Class 3 and 'pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; foods and beverages which are adapted for medical purposes; air deodorising preparations' in Class 5. Aveda opposed Dabur Uveda's application under section 5(2)(b) of the Trade Marks Act 1994 [= Article 4(1)((b) of Directive 2008/95] on the basis of a likelihood of confusion, given the similarity of the marks and the similarity or identity of their respective goods.

Before the UK Intellectual Property Office, the hearing officer dismissed Aveda's opposition. He agreed that some of the goods in Dabur Uveda's specification were identical or highly similar to goods covered by Aveda's registrations, whilw some were not. Following the Court of Justice of the European Union (CJEU) ruling in Case C-120/04 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH, he concluded that the DABUR and UVEDA elements of Dabur Veda's mark shared equal prominence, and that the word UVEDA  -- which was only one letter out from AVEDA -- did not play the sort of dominant role envisaged by the CJEU in Medion. Considering the marks as a whole, the addition of the word DABUR and the fact that UVEDA and AVEDA began with different letters were sufficient to avoid a likelihood of confusion, even where identical goods were involved.

On appeal, Aveda argued inter alia that the hearing officer misapplied Medion and failed to consider whether the word UVEDA played an independent distinctive role within the composite sign and whether, if it did play an independent distinctive role, the fact that it did so would lead to a likelihood of confusion. Said Aveda, the hearing officer should have said that the average consumer would perceive DABUR UVEDA as consisting of a house mark (DABUR) plus a secondary mark (UVEDA) [like PORSCHE and BOXSTER says Merpel], that the average consumer who was familiar with the AVEDA brand would be likely to mistake UVEDA for AVEDA and that therefore there would be a likelihood of confusion. What's more, said Aveda, the addition of the word DABUR would not prevent confusion because the average consumer might well think that goods marked DABUR UVEDA came from an undertaking that was economically linked to the undertaking responsible for AVEDA.

Arnold J allowed the appeal in part. His reasoning ran like this:

Applying Medion, the general principle is that you have to assess likelihood of confusion by considering and comparing each of the conflicting signs as a whole, it sometimes happens that the average consumer, while perceiving a composite sign as a whole [ie not reading DABUR and UVEDA as separate units but absorbing them together], would still recognise that it consisted of two signs and could perceive both the whole sign and its constituent parts as having significance.  Where this happens, that consumer can be misled into believing that there is a kind of connection between the respective undertakings. The hearing officer had indeed misapplied Medion. This was because he didn't consider whether the average consumer would perceive UVEDA as having any significance independently of the composite mark DABUR UVEDA and whether that perception would lead to a likelihood of confusion.

Having pinpointed the flaw in the law that undermined the hearing officer's decision, Arnold J's next task was to hear the opposition afresh. In his view there was little doubt that the average consumer who knew AVEDA beauty products was likely to be confused by the use of DABUR UVEDA in relation to identical goods -- particularly if that same consumer was likely to think that the opposed mark indicated the existence of some connection between DABUR and AVEDA. In this context it made little difference that the second word in the composite mark was UVEDA rather than AVEDA, since those two words were both visually and aurally so very close. Why? Because the human eye had a well-known tendency to see what it expected to see and the human ear to hear what it expected to hear. This being so, it was likely that some consumers would misread or mishear UVEDA as AVEDA.

Bearing all this in mind, the learned judge then divided all the goods for which Dabur Uveda sought registration of its mark, projecting himself into the mind of the hearing officer who should have found as follows:

• there was a likelihood of confusion in relation to goods covered by Dabur Uveda's application which were identical to Aveda's goods.
• there was a likelihood of confusion in relation to those goods which were not identical but merely similar;
• the application would be allowed to proceed to registration in respect of those goods which were neither identical nor similar.

While this judgment is only 66 paragraphs in length, it does not lack the carefully laid-out analytical core which various Kats have come to expect from Mr Justice Arnold. The history of Medion is also the story of the German Bundesgerichtshof's doctrine of Prägetheorie, its trip to Luxembourg, and of the European and national case law that has made the issues in Medion that little bit more accessible to us all.

"You like to-may-toes, I like to-mah-toes ..." here