Likelihood of confusion: TOP and TOP HOME

By Ayan Chowdhury

The case of QUELLE AKTIENGESELLSCHAFT v REPUBLIC TECHNOLOGIES (NA) LLC (2007) involves the appeal by Republic Technologies against the decision of hearing officer to allow registration of the trademark TOP HOME in respect of goods in class 34, namely Tobacco, cigarettes and other smoking articles

Quelle Aktiengesellschaft applied for the registration of the trademark in TOP HOME in respect of goods in many classes including good in Class 34. Republic opposed the registration under section 5(2)(b) on the ground that the applied mark was similar to its own earlier trademark, TOP which was also registered in respect of tobacco materials. Republic opposed on the ground that there was likelihood of confusion on the part of the public and association with his earlier mark. The hearing officer held that the term TOP was descriptive and a laudatory term for which no monopoly should be granted. It was also held by the hearing officer that the room for the public to get confused about the two marks or think that they are associated is little.

Republic appealed on the ground that hearing officer’s decision on the distinctive character of the marked was erred and had wrongly decided upon the question of similarity of the marks.

The Appeal authority dismissed the appeal and upheld the findings of the hearing officer by holding that though the word TOP was common to both the marks and though the goods were identical, the scope for confusion was little, merely due to addition of the word HOME with TOP for the applicant’s mark. The distinctiveness of Republic’s TOP mark was established as it already had it registered given to its specific stylisation.

For further information on trademarks, contact Maitland Kalton or Ayan Chowdhury on +44 (0)20 7278 1817.

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