Aztec ambiguity: the importance of standalone terms

Background

Spilsbury Holdings Ltd (“Spilsbury”) has succeeded in appealing an opposition against its application for the mark AZTEC made by TV Azteca S.A.B.DeC.V ("TV Azteca") relying on its earlier mark AZTECA.

Spilsbury applied to register AZTEC for goods and services in classes 9, 36, 41 and 42 (the “Application”).

The Application was opposed by TV Azteca under Section 5 (2)(b) of the Trade Marks Act 1994 ("TMA 1994") relying on its earlier trade mark for Aztec. The opposition relied on TV Azteca's class 41 services:

Entertainment services, including news bulletins, news programmes, documentaries, educational activities; electronic publishing services; providing online electronic publications, not downloadable.

TV Azteca claimed that the Application for the following class 41 terms infringed their earlier mark:

Developing, arranging, and conducting educational and business conferences in the field of blockchain and programming languages; educational services, namely, developing, arranging and conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of blockchains and distributed computing platforms, and distribution of training material in connection therewith.

On the basis that the marks were found to be similar and the services were found to be identical/similar, the opposition originally succeeded in full.

Grounds of appeal

Spilsbury appealed the decision to the Appointed Person. Spilsbury made its appeal on four grounds. The first three groups of appeal are those of interest as they relate to the Hearing Officer's interpretation of the services:

1. The Hearing Officer wrongly held that the Opponent's “entertainment services, including news bulletins, news programmes, documentaries, educational activities” covered educational activities at large rather than entertainment services featuring educational activities or an educational aspect.
2. In interpreting the term "educational activities" as a standalone term, and not one which falls within "entertainment services”, the Hearing Officer erred in the application of UKIPO guidance on punctuation.
3. In deciding that "educational activities" qualified as a standalone term, the Hearing Officer erred by ignoring cited case law (namely the SkyKick case) and particularly that a term's use should not be interpreted widely but confined to the core of the possible meanings attributable to the terms.

These grounds of appeal all relate to the Hearing Officer's interpretation of the services relied upon by TV Azteca, specifically the question of whether "educational services" was a standalone term covering educational services at large, or a subdivision of "entertainment services" covering educational services within entertainment.

Appeal decision

The Appointed Person pointed out that, in the opposition decision, the Hearing Officer stated in one paragraph that the literal interpretation of the specification was "entertainment services of an educational variety" but then in another paragraph adopted the much broader view that "educational activities" should be read as educational activities at large. The reasoning given by the Hearing Officer for the "wide" interpretation of "educational activities" was that they considered the "narrow" interpretation to be "problematic and unworkable". The Hearing Officer concluded that, following their reading of the WIPO Explanatory Note for class 41, "to encompass ‘educational activities’ within ‘entertainment services’ is … liable to generate an absurdity”.

The Appointed Person confirmed that there is nothing in the WIPO Explanatory Note that stipulates the terms within a class are mutually exclusive and was unable to understand the Hearing Officer's view that "to encompass "educational activities" within "entertainment services"…is liable to generate an absurdity". It was found that it was entirely possible for something to both entertain and educate simultaneously and "indeed, fashioning something as an entertainment with the underlying aim of educating is a common and well-known practice, as (for example) number films, documentaries and TV shows can attest (the well-known television show "Horrible Histories" is just one example of many)."

Outcome

Given that the error of the Hearing Officer occurred in the interpretation of the specification, prior to the evaluative function, the Appointed Person would have become first-instance decision taker across the evaluative exercise by overturning the decision. Therefore, the Appointed Person ordered that the case be remitted to the registry for determination by a different Hearing Officer.

Takeaway points

The significance of punctuation in the interpretation of trade mark specifications

This case sheds light on the interpretation of terms that include a broad 'umbrella' term which designates a list of 'sub-terms'. This case indicates that when a term (eg "educational activities") is included only to specify a broader term (eg "entertainment services, including…"), the broader term will determine the scope of interpretation of all following terms, which cannot be taken as standalone terms. This serves as a reminder to pay close attention to the precise wording and punctuation used in service descriptions. If an applicant wishes to protect a mark for a particular service such as "educational activities" (of all kinds), it should be listed as a standalone term in the specification.