Appeal to the appointed person

Wazdan appealed the hearing officer’s decision to the appointed person, Dr Brian Whitehead, raising four grounds:

Ground 1

Wazdan argued that the hearing officer had erred in the assessment of the average consumer’s degree of attention. It suggested that the majority of the goods in classes 9 and 28 are expensive and would therefore require a higher degree of attention by the average consumer when making a purchase. This was dismissed by the appointed person. While Wazdan provided good reasoning in the appeal for the fact that the average consumer would pay a much higher degree of attention than the hearing officer suggested, no evidence or argument was submitted to this effect at first instance. Therefore, the appointed person held that this was not relevant and could not be taken into account as too late.

Ground 2

This was based on Wazdan’s assertion that the hearing officer was wrong to find that the word SIZZLING was in any way striking or dominant within the earlier marks.

The appointed person dismissed this ground of appeal. He found that the hearing officer had conducted her analysis in a stepwise manner and had made it clear that she had looked at the earlier marks as whole. The hearing officer did not make a finding that SIZZLING dominated the overall impression of any of the earlier marks, but held that the word was more dominant and distinctive than the second word in the second and third earlier marks, given that the second words are allusive of the goods being offered.

Ground 3

Wazdan submitted that the hearing officer had erred in her comparison of the marks. The hearing officer held that the second words in the applications could be viewed as themes or features of the games, and the word SIZZLING is therefore the more dominant and distinctive component of the applications. However, the hearing officer was wrong to solely focus on the meaning of the second words within the applications without comparing their visual, phonetic and conceptual characteristics with the earlier marks.

The appointed person did not agree and dismissed this ground of appeal, as it is was clear from the hearing officer’s analysis that she did take the second word into account when assessing visual, aural and conceptual similarities. The precise weight given to each word was a matter for the hearing officer, and she made no error of principle.

Ground 4

Finally, Wazdan criticised the hearing officer’s finding of an indirect likelihood of confusion. Wazdan argued that the hearing officer wrongly held, in the absence of evidence, that SIZZLING would be seen as a house mark of Novomatic AG, such that it had a family of marks and did not adequately outline the special set of circumstances that led her to reach the conclusion that there was a likelihood of indirect confusion.

This was dismissed by the appointed person. The term “house mark” is a not a defined technical term in trade mark law. However, in the context of the decision, the appointed person held that it was clear that the hearing officer was not using it to refer to a family of marks. Rather, it is clear from her analysis that throughout she considered each of the earlier marks individually. Her finding was that indirect confusion was likely in respect of each of the second and third earlier marks, but not the first earlier mark. In relation to indirect confusion, the appointed person held that the hearing officer did give “proper basis” for her finding, as each of the applications is conceptually similar, in that they carry the concept of something being sizzling (hot). The same could be said of two of the earlier marks (SIZZLING FORTUNES and SIZZLING COIN), whereas SIZZLING HOT has a meaning independent of this, as recognised by the hearing officer. The likelihood of indirect confusion arises because the applications would be considered to be a sub-brand or brand extension of each of the second and third earlier marks.

In short

This case reaffirms how essential it is to put forward all evidence and submissions at first instance as nothing new can be adduced at the appeal stage. It also confirms that at the appeal stage there is a high reluctance to overturn original decisions based on likelihood of confusion, as the hearing officer is experienced and will have conducted a full review of the facts and evidence before them at the time of making the original decision.