The UKIPO has ruled in a case where the German sportswear manufacturer Adidas initiated cancelation procedure against a UK trademark ADDICTED, covering clothing as well as various retail, retail finance, and interior design services. Adidas invoked its earlier combined trademark for the same goods and services.
The grounds for this cancelation were a similarity between the signs, a trademark with reputation and possible unfair competition and tarnishment.
According to the Office, there is no enough similarity between the signs although there is some visual one. Nevertheless, the later mark is not able to create any confusion in the consumer mind regarding the trade origin of the products.
When it comes to taking advantages from the earlier trademark’s reputation, unfair competition, and tarnishment, the UKIPO concluded that there is such a possibility because of which canceled the trademark.
The reasons for this are that for the time being marijuana as a product cannot be freely and legally used. On top of that, the word “Addicted” makes consumer perception even worse. From that perspective, there is a chance when the later mark is used on clothes to create some negative associations and because of its visual similarity with the Adidas trademark these negatives to be transferred to the earlier mark. Apart from this, the later trademark can take advantages of the Adidas reputation on the market that has been built for many years.
Source: Jocelyn Clarke and Christopher Benson, Taylor Wessing за Lexology.