A Doom-laden Decision

Appeal to the Appointed Person, Professor Ruth Annand, Case O/168/11, 6 May 2011

This is an appeal to the Appointed Person, heard by Professor Ruth Annand.  It relates to failed opposition proceedings brought by the owners of rights in DOOM against an application to register TOWER OF DOOM.  The appeal was dismissed and TOWER OF DOOM was allowed to proceed to registration.

The Applicant, Early Learning Centre Limited, a manufacturer and retailer of educational toys for very young children, sought to protect TOWER OF DOOM in class 28 for use as a trade mark in relation to:

Toys; games and playthings; playing cards; gymnastic and sporting articles; parts and fittings for all the aforesaid goods.

The Opponent, ID Software Inc, challenged the application under section 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 on the basis of its right in the DOOM computer game franchise.  The game has a science fiction/horror theme and features, in particular, a space marine stationed on the planet Mars shooting and fighting his way through hordes of undead demons.  Its high levels of violence, gore and satanic imagery made it notorious and despite (or perhaps because of) this, the game spawned several editions as well as a board game featuring figurines and a film.

ID Software relied on the following registered marks as well as unregistered rights acquired through use:

Mark

Number

Date

Goods

DOOM

UK 1587153

07.10.94

Computer software and computer programs, all for playing electronic games; parts and fittings for all the aforesaid goods; all included in Class 9

UK 2005994

21.12.94

Computer programs, computer software and data carriers therefor; video and audio games; electric and electronic apparatus for playing the aforesaid games, parts and fittings for all the aforesaid goods (Class 9)

DOOM 3

CTM

003892023

10.06.04

Computer software games, computer software game programs and computer game cartridges or CD-ROMs for video games for entertainment uses (Class 9)

Manuals sold as a unit with computer software games, computer software game programs and computer game cartridges or CD-ROMS for video games for entertainment uses (Class 16)

In a comparison of the marks, the Hearing Officer found that DOOM was the dominant element in the Opponent’s marks and that TOWER OF DOOM ‘hung together’ so that there was no dominant element.  He acknowledged that there was some aural, visual and conceptual similarity between the marks but thought that these were easily outweighed by the differences and the marks could not be considered similar.

In a comparison of the goods, the Hearing Officer found the only similarity was between “games and playthings” which were similar to computer games.  All other goods were different.

In conclusion, the opposition under section 5(2)(b) failed because:

notwithstanding the commonality in the use of the word DOOM, the potential similarity in respect of “games” and the connected “notional” circumstances of the manufacture, market and consumer… use of the mark applied for will not lead to confusion.

Unfair advantage or detriment to reputation or distinctive character

The opposition under section 5(3) also failed because the Hearing Officer found

no reason to suppose that the consumer on seeing the Applicant’s mark would make the leap to connect it with the Opponent’s marks let alone one that would affect their economic behaviour (Electrocoin Automatics Ltd v. Coinworld Ltd [2005] FSR 79).

Unregistered rights under the law of passing off

The evidence to support the opposition under section 5(4)(a) was found lacking in respect of goodwill but, in any event, there would be neither misrepresentation nor damage because of the finding that the marks were not similar.  The opposition under section 5(4)(a) failed.

The Applicant was awarded £2,250 in respect of its costs.

Level 2

ID Software appealed the decision based on section 5(2)(b) only.  Complaints relating to the evidence were dismissed as insignificant and misinterpreted.  This left the main complaints being that:

  • DOOM should have been found to have been the dominant and distinctive component of the mark

  • TOWER should have been regarded as descriptive of play sets featuring or including towers

The Appointed Person reiterated that an appeal is a review and not a re-hearing.  Professor Annand directed herself using the approach in REEF Trade Mark [2003] RPC 5 that

an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle

With this in mind Professor Annand reviewed the Hearing Officer’s assessment of the similarity of the marks, which was:

  • Visually – There can be no dispute that in this mark DOOM has a visual significance, but with the preposition leading the eye to the relation of a TOWER the mark hangs together with no dominant distinctive element

  • Aurally – [Whilst] there is aural identity in DOOM this dissipates when the marks are taken as a whole

  • Conceptually – [Whilst] it brings to mind a tower, the words ‘OF DOOM’ creates the same aura of fear, dread etc., as the opponent’s mark.

  • Overall – the differences… easily outweigh the similarities such that whilst there is some similarity the respective marks cannot be considered similar.

She concluded that these were matters of evaluation and assessment which could not be addressed in the appeal as there was no distinct and material error of principle.

Comment

This case is a useful reminder of the jurisdiction of the Appointed Person; assessments of similarity, however much they are disliked, cannot be addressed on appeal unless the Hearing Officer has made an error of principle, such as applying incorrect ratio.

It also reaffirms that there may be no similarity overall despite the earlier mark being wholly contained within the applied for mark and an identity or similarity of goods.

First published in the ITMA Review, July/August 2011

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