Indirect Confusion in Trademark Law: Insights from the KO-CO Case
Trademark law plays a critical role in protecting brand identities, helping consumers distinguish between competing products. In the recent case of First Grade International Ltd v KO-CO Foods Ltd (O/353/20), the UK Intellectual Property Office (UK IPO) addressed the concept of indirect confusion—an area that can be particularly relevant for similar but distinct trademarks.
Case Overview
In April 2019, KO-CO Foods Ltd (the Applicant) filed a UK trademark application (No. 3390030) to register a mark for various chocolate-based and cocoa products in class 30. First Grade International Ltd (the Opponent) opposed this application, citing three of its earlier trademark registrations under section 5(2)(b) of the Trade Marks Act 1994, which addresses potential confusion among consumers if two marks are too similar.
First Grade International, known for its coconut-based dairy alternative products, argued that KO-CO’s mark was likely to cause confusion, especially as the goods and the visual identity of the marks bore a strong resemblance. First Grade’s products, well established in the UK market since 2010, included items stocked in major supermarkets, further supporting its claim of a recognizable brand presence.
Evidence Presented by Both Parties
To support its opposition, First Grade International presented evidence showing that its coconut-based products had grown in popularity and were widely available through major UK stockists. This established a strong commercial presence and brand recognition within the relevant market.
In response, KO-CO Foods submitted a Facebook survey intended to demonstrate that its mark did not confuse the public. However, this survey was deemed insufficient and unreliable by the Hearing Officer (HO) because it did not allow for an isolated comparison of the marks. Furthermore, the survey images used were limited to specific goods, like non-dairy milk, and did not encompass the full range of goods upon which First Grade based its opposition. As such, the survey evidence was given little weight in the decision.
Key Findings on Similarity and Confusion
The HO undertook a detailed comparison between KO-CO’s applied-for mark and First Grade’s registered marks. The findings were as follows:
High Similarity with Marks 1 and 2:
The HO determined that there was a high degree of similarity between KO-CO’s mark and Marks 1 and 2 due to several factors:Shared Letters: Three of the four letters were common across the marks.
Visual Motifs: Both marks incorporated a palm tree motif.
Aural Identity: The marks sounded similar when spoken.
Conceptual Similarity: Both marks evoked associations with coconuts or cocoa, creating a similar impression.
Medium Similarity with Mark 3:
Although there were differences, the HO found a medium level of similarity with Mark 3, largely because the term “KOKO” was the dominant element in both marks, while the word “DESIRE” in the opposed mark was considered less distinctive.Comparison of Goods:
The HO assessed the goods covered by the trademarks, finding that many were identical or highly similar. For example, terms like “dessert products” in the earlier registrations were interpreted broadly, encompassing various items KO-CO Foods sought to register.
Indirect Confusion: The Deciding Factor
After comparing the marks, the HO concluded that while there was no direct confusion (where consumers might mistake one brand for another), there was a significant risk of indirect confusion. Indirect confusion occurs when consumers recognize that the marks are not identical but assume a commercial connection between them. This principle, established in LA Sugar v Back Beat (BL-O/375/10), is applied when consumers might believe two similar brands are linked by the same or related entities.
In this case, indirect confusion was deemed likely because consumers could reasonably assume that KO-CO’s products were a variant or extension of First Grade’s line, due to the strong overlap in visual and conceptual elements. The HO noted that indirect confusion could still apply even for low-value goods where consumers may pay less attention during the purchase process.
The Outcome
The UK IPO ruled in favor of First Grade International, concluding that the similarities between KO-CO’s mark and First Grade’s trademarks were likely to cause indirect confusion. The opposition succeeded in full, preventing KO-CO’s mark from being registered.
Key Takeaways from the KO-CO Case
This case highlights several important points in trademark law:
The Role of Indirect Confusion: Indirect confusion is distinct from direct confusion and recognizes that consumers may assume a relationship between brands even when they can tell the marks apart.
Importance of Reliable Evidence: Evidence like social media surveys can be problematic if not conducted rigorously. The KO-CO case shows that trademark disputes require carefully gathered evidence that covers all relevant marks and goods.
Broad Interpretation of Goods: The decision demonstrates that the UK IPO may interpret product categories broadly, particularly when earlier rights protect general terms like “dessert products.”
By examining these factors, the First Grade International Ltd v KO-CO Foods Ltd case underscores the importance of robust trademark protection and clear differentiation between brands. For businesses, it serves as a reminder of the complexities of trademark registration and the potential challenges of securing a distinctive brand identity in a competitive marketplace.