This Appointed Person Appeal (from a decision of a Hearing Officer in UK IPO Trade Marks Registry) concerned the Trade Mark Application for the mark “Wayve” to be registered for inter alia “software for self-driving cars or autonomous vehicles” (Class 9) and “arrangement of transport” (Class 39). Iona Berkeley represented Wayve Technologies Ltd who was the Trade Mark Applicant and Respondent to the Appeal. The Appeal was brought by Waymo LLC after its Opposition to the Trade Mark Application was unsuccessful. Waymo LLC’s Opposition raised objections under Sections 5(2)(b), 5(3) and 6 of the Trade Marks Act 1994 based on its earlier trade marks for the mark “Waymo” registered for good and services in inter alia classes 9 and 39 (in particular “computer software for vehicle navigation” and “transportation services”).
On Appeal Waymo LLC, the Appellant, argued that in relation to the Section 5(2)(b) objection the Hearing Officer (i) had made an error of principle when considering the evidence on the question of acquired distinctiveness and when finding that the earlier marks had not acquired an enhanced distinctiveness; (ii) was wrong to conclude that the earlier marks “Waymo” had no conceptual meaning; (iii) had failed to take into account the interdependency principle (that the more similar the goods and services to which the respective marks were applied the more likely that the public would be confused by those marks); and (iv) erred in considering the degree of attention the average consumer would be likely to pay to the respective marks. Further the Appellant argued in relation to the Section 5(3) objection that the Hearing Officer had erred in finding that no sufficient reputation had been established at the filing date for the Opponent to be able to rely on the extended protection given by Section 5(3). The Appointed Person, Iain Purvis QC, rejected all the Grounds of Appeal finding that the Hearing Officer had made no error of principle and was not wrong on any of her findings. Indeed, the Appointed Person found that in relation to both the Section 5(2) and 5(3) objections he would have come to the same conclusions as the Hearing Officer (i) that there was no likelihood of confusion between the Trade Mark Application “Wayve” and the earlier marks “Waymo”; and (ii) that the Appellant/Opponent had not established the required reputation for a section 5(3) objection in relation to its earlier marks. Therefore, the Appeal was dismissed.