Burton’s Foods Ltd v Not Guilty Food Co Ltd: the wrong approach?

Posted: 28/06/2023

• In the majority of cases, it is challenging to overturn a first instance decision on appeal.
• Clearly identifying all grounds of argument in pleadings is essential to allow the appointed person to properly consider your case.
• Evidence of actual confusion is not always enough to establish likelihood of confusion.
• Where there is no likelihood of confusion, the more onerous requirement of a misrepresentation causing deception under common law passing off will not be made out.

The UK IPO has rejected an appeal by Not Guilty Food Co Ltd (the appellant), opposing an application by Burton’s Foods Ltd (the respondent) for a figurative series mark (shown above) covering a variety of baked goods, confectionery and desserts in class 30. The appellant relied on its senior UK trade mark registrations for “The Skinny Food Co” and “The Skinny Food Co Skinny Dips”, covering identical or highly similar class 30 goods, as well as two unregistered marks: THE SKINNY FOOD CO and the mark shown above.

Comparison of marks 

In the hearing officer’s (HO’s) view, the relevant goods may be purchased quickly and with little reflection, resulting in a low to medium degree of attention by the average consumer, who was considered to be a member of the general public. The HO further considered that the distinctiveness of the appellant’s mark, specifically “The Skinny Food Co”, was very low. In the HO’s view, due to the word “skinny” being in widespread use to mean something low fat, the mark’s combination of elements had only the “minimum degree of distinctiveness required for registration”.

In comparing the appellant’s and respondent’s respective marks, the HO concluded that the marks were visually and aurally similar to a reasonably high degree and conceptually similar to a medium degree. The majority of the class 30 goods applied for by the respondent were considered either identical or highly similar to the appellant’s class 30 goods.

Despite the appellant submitting examples of (alleged) actual confusion, the HO held there was no likelihood of direct or indirect confusion between the appellant’s and respondent’s trade marks, causing the appellant to lodge the present appeal.

Emphasis on process 

The appointed person (AP) emphasised the standard of review appropriate to appeal hearings, setting out the established principles for appeals both in general and those specifically before the AP. The principles highlighted in the decision included:

• that appeals are by way of review and not re-hearing;
• to succeed, the appellant must satisfy the AP either that there was “a distinct and material error of principle” in the original decision or that the HO in the original decision was wrong;
• a decision may be treated as wrong where it is unsupportable, simply wrong or where the AP is doubtful as to the view expressed, but concludes on balance that it is wrong; and
• appellate courts should not “rush to find misdirections warranting reversal” only because they might have reached different conclusions or expressed themselves differently.

Remarks made by Mr Ian Purvis QC1 were also cited by the AP in the decision, underlining a general “reluctance to interfere” with an HO’s decision on likelihood of confusion due to:

• the number of factors to be considered and the relative weight of each being a matter of judgment on the particular facts of the case;
• the test of “likely to cause confusion among the average consumer” being inherently imprecise, including because the “average consumer” is not a real person;
• HOs dealing with more cases than appellate tribunals; and
• the legal test requiring a prediction as to how the public may react to two trade marks in ordinary use, which is difficult to make with any confidence.

As Mr Purvis QC concluded, a “sensible” appellate tribunal should “apply a healthy degree of self-doubt to its own opinion” on the result of any particular case. The principles set out in the decision, as well as the remarks made by Mr Purvis, demonstrate the high threshold that must be met for appellants to successfully reverse a first instance decision. Even if an AP is of the view that the first instance decision was or may have been wrong in applying a healthy degree of self-doubt to this view, it becomes difficult for an appellant to sway the outcome in its favour.

Appeal decision

Although the appeal was filed on a number of grounds, including that insufficient weight was placed on the evidence of actual confusion and that the trade marks were not considered as a whole in their comparison, crucially the appellant did not expressly advance the appeal on the basis that the HO was “wrong”.

It was therefore not open to the AP on appeal to consider whether, per the principle approved by Arnold J in Apple Inc v Arcadia Trading Ltd, the view expressed by the Registrar is “one about which the Appointed Person is doubtful but, on balance, concludes was wrong”. Consequently, the decision was based only upon the alleged errors of principle, as advanced by the appellant, demonstrating the importance of clearly expressing and identifying arguments in pleadings to ensure that key points are not overlooked or absent from the claim.  

In reaching an ultimate decision, the AP concluded that, contrary to the appellant’s pleadings, the HO had not artificially dissected the marks when making a comparison and had clearly considered them and their overall impression as a whole. Furthermore, it was held that the appellant’s evidence of confusion had been properly scrutinised and considered by the HO (who was deemed to have been critical of its reliability and verifiability) and that “pointing to actual instances of consumer confusion does not, in and of itself, prove that there is a likelihood of confusion”.

Most significantly, to support this ground, the appellant had to contend that the HO’s decision was wrong, which was not pleaded. The HO’s conclusion that there was no scope for direct or indirect confusion was therefore sustained, as was the absence of passing off, which has the more onerous requirement of a misrepresentation causing deception.

This article was first published in the July 2023 issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk.  

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