Late last year the Supreme Court of Appeal (SCA) handed down an important trademark judgment. This was a trademark opposition and the issue was whether a local accounts software company was entitled to the registration of the mark Orangeworks for software in the face of an earlier application by the international telecoms company for the mark Orange which also covered software. The SCA said that it wasn’t, because there was a likelihood of confusion.

Why? Because ‘orange’ was an arbitrary and distinctive name for software: ‘I accept that ‘orange’ is an ordinary English word, in wide use to describe a colour or a fruit, and is not a constructed word finding its distinctiveness in the word itself. But to my mind the dominant feature of the word when used as a mark in this context, is that in its ordinary meaning it has no association with computer software or computer technology. It is precisely the absence of any natural association that makes the mark distinctive and catches attention.’ And because ‘orange’ was the dominant feature of the later mark.

Nothing too controversial there! But the judgement did also have some interesting aspects. First, the court made it clear that prior decisions are of limited value in determining likelihood of confusion, because each case is different. Second, the court said that the fact there might be loads of company and domain names featuring the word ‘orange’ was irrelevant. Why? Because some of those names might well be confusingly similar to the Orange trademark, whereas others might be combined with other distinctive features. Third, it said that the discerning purchaser test was not appropriate: ‘I have no doubt that computer software for accounting is indeed purchased with considerable care, but confusion need not be lasting for it to disqualify a mark from registration. It is sufficient if it is confusing only for a short time, sufficient to attract initial interest, albeit that the confusion might later be cleared up.’

Unfortunately there was no further discussion on the issue of whether initial (short-lived) confusion is sufficient in all trademark infringement cases. Nor was there any discussion on what, if any, special considerations arise in cases where one mark totally incorporates another. Which is a great pity, because these are important issues and they warrant greater attention. Which makes this a very rare example of a decision that’s just too short.

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