Surprising UKIPO decision in SHAKENBAR v SHAKEN UDDER case
22 November 2021
The UKIPO has issued a decision finding a likelihood of confusion between two marks for milkshake-related goods and services when only the non-distinctive and descriptive element "SHAKEN" was common between them.
The SHAKENBAR decision
UK company Bubbleshake Bar filed a UK trade mark application for the figurative mark shown below in classes 29, 30 and 43 (broadly relating to chocolate and milkshake-related goods and services):
The application was opposed by another UK company, Shaken Udder, on the basis of its earlier UK word mark "SHAKEN UDDER" registered largely for chocolate and milkshake-related goods as well as drink provision services. Naturally, the Examiner found identity in the majority of the goods and services for which the two marks were registered.
In examining whether Bubbleshake's figurative mark was similar to SHAKEN UDDER, the Examiner held that "SHAKENBAR" would play the greater role in the overall impression of Bubbleshake's mark. In respect of SHAKEN UDDER, it was held that "SHAKEN" and "UDDER" were equally dominant in the Opponent's earlier mark. As such, in reaching his decision, the Examiner predominantly compared SHAKEN UDDER with SHAKENBAR, paying less attention to other elements of Bubbleshake's mark such as the figurative devices and the slogan.
The Examiner found that the common element "SHAKEN", "the only point of similarity between the marks", resulted in a medium degree of conceptual and aural similarity and a low to medium degree of visual similarity.
Surprisingly, in assessing the likelihood of confusion, the Examiner found that the common element SHAKEN would cause the average consumer to believe that Bubbleshake's mark was another brand or sub-brand of SHAKEN UDDER on the basis that SHAKEN was sufficiently distinctive. The Examiner reached this finding even though a significant proportion of the relevant goods and services were milkshake-related.
On the basis of the likelihood of confusion which arose from the common element "SHAKEN", the Examiner concluded that Bubbleshake's mark should not be registered under sections 5(2)(b), 5(3) and 5(4)(a) Trade Marks Act 1994 (TMA) (likelihood of confusion, unfair advantage/dilution and passing-off, respectively).
Likelihood of confusion and common elements
Following Sabel v Puma (C-251/95), conceptual, visual and aural similarities between two marks increase the likelihood of confusion between them. It follows that any common elements would ordinarily result in higher similarity, and therefore a higher likelihood of confusion among the average consumer. This is particularly so where the common elements are dominant within the marks at issue.
However, where the elements common to the two marks at issue are descriptive and/or non-distinctive in relation to the relevant goods and services, this weighs against a likelihood of confusion. This is a result of consumers being less likely to conclude that two similar descriptive marks signal a connection between two businesses because a credible and dominant alternative explanation exists for the similarity: the similarity is attributable to their descriptiveness.
A recent IPEC infringement decision demonstrates the above principle. In Oatly AB v Glebe Farm Foods Limited  EWHC 2189 (IPEC), the well-known beverage company OATLY pursued an action against Glebe Farm’s use of the sign "PUREOATY" in respect of oat-based beverages. OATLY alleged trade mark infringement and passing off, asserting its eponymous earlier trade mark rights which were registered for oat-based beverages.
In Oatly, as in SHAKENBAR, the sole similarity between the marks was the common element, in this case "OAT". HHJ Hacon noted that OAT was descriptive in relation to the relevant goods and recalled Arnold J's analysis of European jurisprudence in Whyte and Mackay v Origin  EWHC 1271 (Ch):
"...what can be said with confidence is that, if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion."
The IPEC therefore concluded that there was no likelihood of confusion under section 10(2) TMA (likelihood of confusion) and dismissed OATLY's claim for passing off.
The surprising lack of any reference to the above case law in the SHAKENBAR decision is perhaps explained by the Examiner's determination that SHAKEN is distinctive in the context of milkshake-related goods and services. However, this in itself is perplexing, particularly as the Examiner acknowledged that the allusive nature of SHAKEN UDDER "may give rise to a link to shaken milk, being milkshakes", concluding that SHAKEN and UDDER even when combined only has a "low to medium degree of inherent distinctive character" by virtue of the unusual combination of words.
Even more troublingly, the Examiner appears to suggest that a descriptive and/or non-distinctive common element should permit a "family of marks" style argument, where a change in one element of an earlier mark appears entirely logical and consistent with a brand extension (citing L.A. Sugar Ltd v By Back Beat Inc BL-O/375/10). However, the Appointed Person in that decision found no likelihood of confusion between L.A. SUGAR and 26 RED SUGAR in relation to clothing products, demonstrating the narrow application of this principle even in the context of distinctive and non-descriptive common elements.
SHAKEN is clearly descriptive and/or non-distinctive in relation to milkshake-related goods and services. As such, the SHAKENBAR decision cuts across a fundamental principle of the trade mark legal framework: traders should be able to describe their goods and services without fear of infringing another's trade mark rights. This principle is necessary to prevent de facto monopolies over goods and services (particularly as trade marks, unlike patents, are renewable indefinitely).
The prevailing case law is therefore clear and justified. When faced with opposition or infringement action, the defending party can highlight the non-distinctive and/or descriptive nature of common elements such that those common elements are all but disregarded in the likelihood of confusion assessment. This should be done especially where the common elements are dominant elements and especially where the common elements are the only points of similarity between the two marks at issue. These arguments should be made in addition to the more traditional approach of showing dissimilarity by illustrating the dominancy and distinctiveness of the elements which differ between the two marks under consideration.
Special thanks to trainee Robert Dickens for drafting this article.
A version of this article was first published by World Trademark Review