NBA Properties Inc v Pizza Texa Bulls Inc
[2023] EWHC 3040 (Ch)
Extreme Networks Limited v Extreme E Limited
14 November 2024
[2024] EWCA Civ 1386
Court of Appeal
Two companies fought over a trademark. A judge initially sided with one, but a higher court reversed the decision, saying the first judge misinterpreted the evidence. The higher court found that the initial decision-maker had correctly assessed the likelihood of confusion and that the trademark was too similar to cause problems.
Key Facts
- •Extreme E Ltd applied to register a trade mark.
- •Extreme Networks Ltd opposed the application in Classes 41 and 43 based on likelihood of confusion.
- •The hearing officer found a likelihood of confusion for some services in Class 41 and all in Class 43.
- •Extreme E Ltd appealed to the High Court, which partially allowed the appeal.
- •Extreme Networks Ltd appealed to the Court of Appeal.
Legal Principles
Likelihood of confusion must be assessed globally, considering all relevant factors from the perspective of the average consumer.
Article 5(1)(b) of Directive 2015/2436/EU and Article 8(1)(b) of Regulation 2017/1001/EU
Goods and services must be similar (or identical) for likelihood of confusion to exist.
Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.
Similarity of goods and services is not determined solely by Nice Classification; factors like nature, purpose, use, competition, and complementarity are relevant.
Article 39(7) of Directive 2015/2436 and Article 33(7) of Regulation 2017/1001, Case C-39/97 Canon
Specifications of goods and services should be interpreted narrowly, focusing on the core meaning.
Sky plc v SkyKick UK Ltd [2020] EWHC 990 (Ch)
Appellate courts should only intervene if the hearing officer erred in law or principle, or if there's an identifiable flaw in their reasoning.
Magmatic Ltd v PMS International Group plc [2016] UKSC 12
Outcomes
The Court of Appeal allowed the appeal and reinstated the hearing officer's decision.
The judge erred in interfering with the hearing officer's decision. The hearing officer correctly applied legal principles and made no error of principle in assessing similarity. The judge's interpretation of the hearing officer's reasoning was incorrect and improperly focused on a test of identity rather than similarity.