Deutsche Telekom AG v E! Entertainment Television Inc

This decision concerns an opposition by Deutsche Telekom AG (the opponent) to an application by E! Entertainment Television Inc (the applicant) to register the trade mark 'E! ONLINE'. The dispute centred on whether the applicant's proposed mark was deceptively similar to the opponent's existing trade marks, which also included the word 'ONLINE'. The hearing officer, Iain Thompson, was tasked with determining the registrability of the applicant's mark.

The primary legal issue before the hearing officer was whether the applicant's trade mark 'E! ONLINE' was deceptively similar to the opponent's earlier trade marks, thereby infringing section 44 of the relevant Act. This required an assessment of the marks as a whole, considering their visual and phonetic similarities, as well as their conceptual implications, in light of the goods and services for which registration was sought and the likely consumers.

The hearing officer applied the principles established in cases such as *Re Application by the Pianotist Co Ltd*, which require a holistic consideration of the marks, the goods, the customers, and the circumstances of their use. He found that while both marks shared the word 'ONLINE', this term was descriptive of the services offered, which involved global computer on-line networks, and therefore possessed weak distinctive character. The remaining elements of the marks, a single letter ('T' or 'E') and a separating symbol (hyphen or exclamation mark), were also considered weak. Despite the common element 'ONLINE', the differences in the initial letters and separating symbols were deemed sufficient to create a dissimilar overall impression, particularly as these elements appeared at the beginning of the marks and would therefore be the first to catch a consumer's attention. Furthermore, the services were provided in different marketplaces through different trade channels.

Consequently, the hearing officer determined that the trade marks were not deceptively similar and that the opponent had not established its opposition under section 44 of the Act. The application was therefore permitted to proceed to registration, subject to any appeal. The applicant was awarded its costs.