On 15 December, Mrs Justice Joanna Smith DBE handed down a short decision in an appeal from the Trade Marks Registry in Shine TV Ltd v. Ska Trading Ltd  EWHC 3156 (Ch).
Ska sought to register the mark ‘MISTER CHEF’ for various cooking utensils. Shine owned earlier rights in the form of trade marks registered for ‘MASTERCHEF’ for both cooking utensils and a reality television programme in the field of cooking. It opposed the application under both section 5(2)(b) (relying on its registrations for cooking utensils) and 5(3) (relying on its registration and reputation for its reality television series).
At first instance Allan James, the Hearing Officer for the Registrar, found that the marks were visually and aurally similar but that they were conceptually dissimilar. In particular, he found that the average consumer would understand the earlier sign to mean a highly skilled chef.
Shine appealed. At the hearing of the appeal, it had two arguments. First, that Mr James had failed to take alternative meanings of the element ‘MASTER’ into account when considering conceptual similarity. Secondly, that he had somehow imported the reputation for reality television into his conceptual comparison when arriving at the conclusion that the earlier sign designated a ‘top chef’.
In rejecting the first ground, Joanna Smith J. noted that Shine had pointed to different potential meanings of the term ‘MASTER’ in its submissions below. She also found that, since Mr James had observed that the meaning he had adopted was the third of several possible meanings in the Oxford English Dictionary, he had plainly considered the other possible meanings.
Turning to the second ground, the Judge gave the ‘tentative’ arguments of the appellant short shrift. She was not satisfied that it was open to her to infer an importation of knowledge of reputation for different services in the way submitted by Shine.
The Judge rejected these grounds and refused the appeal.
This case is an example of the relatively rare but permissible situation where visual and aural similarity can be overcome by conceptual dissonance.