06 August 2020

That’s the Spirit! Mathys & Squire represents Spirit Energy Limited in successful UKIPO opposition appeal

Our firm is proud to represent a diverse range of clients in a variety of commercial fields, one of which is Spirit Energy Limited (SEL). SEL started life as a new entity into which Centria plc’s exploration and production (E&P) business and Bayerngas Norge AS were contributed enabling SEL to operate as an independent business in the oil and gas E&P sector.

In 2017, we filed, on behalf of SEL, UK trade mark applications for the marks SPIRIT ENERGY and, as a series mark, variations of SEL’s logo mark (below). These applications covered a variety of goods and services in classes 4, 37, 39, 40 and 42 relating to the oil and gas industry and oil and gas E&P.

The opposition proceedings

Both applications were opposed by Spirit Solar Limited (SSL), which operates a solar panel installation company in Reading and the surrounding areas. The oppositions were filed on the basis of SSL’s UK trade mark registration of SPIRIT SOLAR and its alleged unregistered trade marks SPIRIT, SPIRIT SOLAR and SPIRIT ENERGY.

The oppositions were based on SSL’s allegations that SEL’s application would:

(1) lead to a likelihood of confusion (under section 5(2)(b) of the Trade Marks Act 1994 (TMA));

(2) take unfair advantage of the alleged distinctive character or repute of the SPIRIT SOLAR mark (section 5(3) TMA); and/or

(3) be liable to be prevented under the UK common law tort of passing off (section 5(4)(a) TMA).

SSL also argued that SEL’s applications had been filed in bad faith (section 3(6) TMA). On behalf of SEL, we counter-attacked SSL’s UK registration on the ground of non-use.

The Hearing Officer issued her decision in the consolidated proceedings in August 2019 (the ‘Decision’). In the Decision, the Hearing Officer partially revoked SSL’s UK registration to restrict it to goods and services relating to, generally speaking, solar panels and solar panel installation services (and associated services). The Hearing Officer decided that there was no likelihood of confusion between the marks on account of the respective goods/services being dissimilar (or similar only to a very low degree). The Hearing Officer also found that the applications were not filed in bad faith.

Despite the restriction of SSL’s registration, and the finding that there was no likelihood of confusion, the Hearing Officer decided that use of SEL’s marks would take unfair advantage of the repute/distinctive character of SSL’s registration and could be prevented under the tort of passing off in respect of SSL’s unregistered SPIRIT and SPIRIT SOLAR marks.

The appeal proceedings

There are two possible routes of appeal in respect of UK trade mark opposition decisions, either to the High Court or to the Appointed Person; the latter route does not allow for further appeal to any higher Court. SEL appealed the Decision to the Appointed Person and SSL cross-appealed. The appeals were heard in December 2019, with the appeal decision issued in March 2020.

With respect to the decision regarding section 5(3) (reputation), the Appointed Person disagreed with the Hearing Officer and found that the Hearing Officer was wrong to find that SSL’s SPIRIT SOLAR mark was known by a significant part of the relevant public. In the absence of a reputation, the opposition under section 5(3) could not succeed, and SEL’s appeal in this regard was allowed.

The Appointed Person also disagreed with the Hearing Officer’s decision that a link would be established between the respective marks and therefore allowed the appeal and dismissed the opposition under section 5(4)(a) (passing off) on the basis that there would be no misrepresentation.

Turning to section 5(2)(b) (likelihood of confusion), the Appointed Person upheld the Hearing Officer’s decision that the respective goods/services were dissimilar.

As a result of the appeal, the oppositions were dismissed in their entirety and an award of costs was made to SEL.

The appeal decision represented a very good result for our client, allowing it greater certainty with respect to its ability to use and register its mark in the UK. As reported by the popular IP blog The IPKat in April 2020, the odds of overcoming the Hearing Officer’s opposition decision on appeal before the Appointed Person are relatively slim, with only three (including SEL’s) of 21 appeals at the beginning of this year being successful. The case also highlights that a great deal of care should be taken when filing evidence in opposition proceedings to ensure that grounds which are evidence-dependent are fully supported.

The trade mark team at Mathys & Squire is experienced in assisting clients in both defending and prosecuting trade mark opposition proceedings before the UKIPO, as well as the EUIPO. Please get in contact with us if you have any potential disputes you would like to discuss.

Harry Rowe
Managing Associate