On the 17 May 2011 Thornton & Ross applied to register the following sign as a British trade mark for the following categories of goods:
"Class 03: Preparations for care of the skin; cosmetics; toilet preparations; after-sun preparations; preparations for sun protection; hair lotions; shampoos; hair care preparations; foot care preparations; dentifrices; mouthwashes; essential oils; soaps; cleaning preparations; bleaching preparations and other substances for laundry use; polishing, scouring and abrasive preparations
Class 05: Pharmaceutical preparations and substances; veterinary preparations; sanitary preparations for medical purposes; medicated skin care preparations; medicated preparations for application to the skin after exposure to the sun and for use in the treatment of sunburn; sun protection preparations for medical purposes; medicated hair care preparations; medicated foot care preparations; medicated mouthwashes; materials for dressings; preparations for aiding removal of head lice in hair; insecticidal preparations for hygiene purposes; disinfectants; fungicides"
Its application was opposed by the Swiss company Strellson AG, which had registered the following device mark for perfumes and cosmetics in class 3. Strellson relied on s.5 (2) (b) of the Trade Marks Act 1994 which provides:.
“5.-(2) A trade mark shall not be registered if because –
(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,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”
Both sides applied for a hearing and the case came on before Mr.Oliver Morris on behalf of the Registrar on 15 Nov 2012. Strellson was represented by Mr. Mark Foreman of Rouse & Co. and Thornton & Ross's agent, Janet Bray of L J Bray & Co,. instructed me. Mr. Morris's decision appeared on 27 Dec 2012.
In deciding the issue Mr. Morris referred to Sabel BV v. Puma AG  R.P.C. 199, Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer  R.P.C. 117, Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel B.V  F.S.R. 77, Marca Mode CV v. Adidas AG + Adidas Benelux BV  E.T.M.R. 723, Case C-3/03 Matrazen Concord GmbH v GmbGv Office for Harmonisation in the Internal Market  ECR I-3657 Medion AG v Thomson multimedia Sales Germany & Austria GmbH (Case C-120/04) and Shaker di L. Laudato & Co. Sas (C-334/05). Citing Mr Geoffrey Hobbs QC;s decision in La Chemise Lacoste SA v Baker Street Clothing Ltd (BL O/330/10) he summarized the principles as follows:
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;Mr. Morris decided that
(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, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite 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;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, 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 causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
"The average consumer will be a member of the general public and, although the cost of the goods can vary, they are not, generally speaking, expensive items and will be selected with no more than an average level of care and consideration. The goods in class 5, on the other hand, contain goods which are medicated. The impact of this is that the level of care and attention used in their selection is likely to be higher and, furthermore, the average consumer may be a member of the general public or a health care professional"In making his comparison he adopted the Collins dictionary definition of "cosmetics":
“Any preparation applied to the body, esp. the face, with the intention of beautifying it.”
He concluded that a cosmetic was, therefore, "a preparation, the purpose of which is to beautify the face or body." He continued
"Whilst cosmetics such as lipstick, mascara and eye shadow may be the first and most obvious type of goods that come to mind if one were asked to consider the type of goods that fall within this category, I do not consider that this is all the term covers. For example, preparations (such as creams and lotions) whose intended effects are to reduce wrinkles would be classified as a cosmetic given that it aims to have a cosmetic impact on the appearance of the user. A further example can be seen when Mr Justice Neuberger in Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and Another held, on the facts of the case before him, that a dry skin lotion was a cosmetic."
Mr. Morris found that preparations for the care of the skin, cosmetics, and toilet preparations were identical to cosmetics, after sun, sun protection and foot care preparations had a reasonably high degree of similarity, hair lotions and hair care products, essential oils and soaps and cleaning preparations to have a moderate degree of similarity. The opposition thus succeeded in respect of
Class 03: Preparations for care of the skin; cosmetics; toilet preparations; after-sun preparations; preparations for sun protection; foot care preparations.
Class 05: Medicated skin care preparations
but failed in respect of everything else. Though Thornton & Ross had won more than it had lost Mr Morris did not think that that justified an order of costs in its favour. He thus ordered each side to bear its own costs.