On 16 June 2009 Mrs Ann Corbett dismissed Bettys & Taylor Group Ltd's application for the invalidation of UK registered trade mark FAT BETTY with costs (BL Number 0/163/09). The mark had been registered by Mr. Jonathan Kidd who carries on business in the name or style of "Cheese & Co." from an industrial estate near Tockwith. In her judgment, the hearing officer referred to Mr. Kidd as "Cheese",Mr. Kidd sells a range of nibbles and savoury biscuits in the name known collectively as "A Taste of Yorkshire". Among the products in that range "organic cheesey nibbles" that are sold under the registered trade mark in the drums shown on the right.
The applicant company runs among other businesses several tea shops in Harrogate, Illley, Northallerton and York under the BETTYS appellation. It had registered the word BETTYS simpliciter and in combination with other words as a trade mark for a large number of goods and services. The group challenged the registration under s.5 (2) (b), (3), (4) (a) of the Trade Marks Act 1994.
This is a case that had attracted a lot of local interest in the national and Yorkshire press with articles in The Daily Telegraph, Wetherby News and the Yorkshire Business Desk. It is also of interest to intellectual property practitioners in view of the group's earlier successful opposition to Granada TV's Betty Kitchen Coronation Street Application [2002] RPC 840.
Finding that the goods for which Mr Kidd's mark had been registered was identical to those of the earlier marks, Mrs. Corbett compared the marks:
"32. Cheese’s mark consists of an ordinary English word, the adjective Fat, and the common name Betty. I consider the word Fat and its meaning, and the fact that Betty is a name, to be well known by the public at large. The word Fat has somewhat negative connotations in relation to foodstuffs, as B&T submitted at the hearing, and is therefore somewhat unusual but the words hang together to create a distinctive whole. B&T’s marks are single words which are suggestive of the possessive form of the name Betty (and perhaps more so in relation to the marks in cursive form). I say “suggestive” because of the absence of the necessary apostrophe. (I note that B&T say they originally used their marks in the possessive form but have since dropped the use of the apostrophe).33. To the extent that the name BETTY is common to both marks, albeit in its (quasi) possessive form in the case of B&T’s marks, there is a degree of visual and aural similarity. In my view, the singular and the possessive forms are close in appearance and potentially more so in sound, given that when goods are referred to by their brand it is sometimes in the possessive form, as in “Fat Betty’s biscuits”. But there are other, quite clear differences. Cheese’s mark is not just the word Betty; it also contains the word Fat as the first element. Given its relative position in the mark, it is unlikely that the word Fat will be overlooked, either when the mark is referred to, or in its impact on the eye. Balancing the similarity of Betty and BETTYS with the differences in the marks as wholes, namely, that Cheese’s mark is composed of two words, the additional word Fat as the first part of the mark (which is generallyconsidered as being of most significance) and, to a lesser extent, the addition of the letter “S” to B&T’s marks, I am of the view that the respective marks are visually and aurally distinct.34. As I indicated above, Cheese have provided evidence that Fat Betty is a landmark on the North Yorkshire Moors. Whilst I am prepared to accept that some people, on hearing the mark, may bring the landmark to mind, for others not familiar with the area, the mark will simply bring to mind a female called Betty who is overweight. B&T’s marks bring to mind a business run by or having a connection with a woman called Betty. There is some degree of conceptual similarity between the respective marks but the inclusion of the word Fat in Cheese’s mark creates a specific impression of size which is absent from the earlier marks."
Since both parties agreed at the hearing that the purchase of such goods will rely heavily on the visual impression the consumer has of the marks, she took the view that the the visual comparison between the marks was of greater than usual importance. Taking all relevant factors into account and applying the global approach required of her, the hearing officer found the respective marks were not likely to be confused even though the goods were identical.
The absence of confusion also disposed of any claim in passing off which disposed of the objection under s.5 (4) (a) and having decided that the registered mark was neither the same as or similar to any of Betty & Taylor's earlier marks there was no need to consider the s.5 (3) ground.
