Case No. IP-2014-000051

Submissions 113. Dealing with the Registered Mark ORAN PRE-CAST and the signs ORANMORE PRECAST or ORANMORE PRE-CAST simpliciter first:i)It is common ground that: that PRECAST/PRE-CAST are identical non-distinctive and descriptive elements; and that there is no conceptual similarity between ORAN PRE-CAST and ORANMORE PRECAST because, although Oranmore is an Irish place name, a UK consumer is unlikely to know that or to perceive Oran or Oranmore as having any particular meaning.ii)Oran’s case is that the Registered Mark and the ORANMORE Signs simpliciter are so highly similar as to be easily interchangeable, giving rise to a high likelihood of confusion even absent any evidence of actual confusion. Mr Moody-Stuart submits that: the entirety of the Registered Mark is contained in ORANMORE PRECAST and ORANMORE PRE-CAST; they are visually and aurally very similar; the first syllable of the Oranmore Signs is the visually and aurally dominant one; and the only addition to the Registered Mark is the single syllable ‘MORE’ which comes after the visually and aurally dominant first syllable ‘ORAN’. Mr Moody-Stuart submits that suggests an additive connection, i.e. something which is ‘more ORAN’.iii)Mr Moody-Stuart submits that there is no basis for suggesting that ORAN/ORANMORE are the dominant elements in the mark and signs such that the identity between the second words PRECAST/PRE-CAST would be disregarded. PRECAST/PRE-CAST are not negligible components causing this case to fall within the guidance in sub-paragraph 52(d) of Specsavers.iv)Mr Moody-Stuart submits that, for the purposes of Specsavers sub-paragraph 52(h), ORAN is highly distinctive, as it has no particular meaning for UK consumers and it is not descriptive of, nor has any relationship with, the goods and services for which it is registered. ‘Oran’ has no meaning or relationship to precast concrete per se. Mr Harbottle disagrees and submits that ORAN cannot be said to have a highly distinctive character. v)Mr Harbottle for the Defendants submits that the average consumer is unlikely to attach any significance to the word PRECAST/PRE-CAST, which is wholly descriptive and commonplace in the pre-cast concrete industry and so negligible. He does rely on the guidance in sub-paragraph 52(d) of