Sometimes when it comes to trademark disputes they can be defined as a battle between ‘David and Goliath’ considering the different positions and backgrounds of the Parties.
This is the case between an owner of a small boutique in the UK and the global clothes chain Zara.
Amber Kotrri owns a clothes boutique under the name ‘House of Zana’ for which she filed a trademark in the UK.
Against this application, an opposition was filed by ZARA based on an earlier mark for clothes and stores. Additionally an established reputation was claimed aiming to support the likelihood of confusion and the possible negative impacts on Zara’s famous brand.
Mrs. Kotrri pointed out that the name of her boutique stemmed from the Albanian word for fairies, and the reason for using it was the fact that her husband was Albanian.
The UKIPO accepted the meaning of the mark applied for but concluded that it is not popular among UK consumers at all, so it is irrelevant for the case.
Although the Office found some similarities between ZANA and ZARA, dismissed the entire similarity between the signs because the words HOUSE OF in the later mark created enough distinguishing impression.
When it comes to the claimed reputation of ZARA, the Office found only a small possibility for association with the latter mark in the consumer’s mind, so any detriment or tarnishment was not feasible as a whole.
Recent registration of a word mark has been in the public eye in the UK as BBC reports in this article.
The case concerns a trademark for Cariad registered for candles by Fizzy Foam company. In translation from Welsh, this means Love.
Another company that uses the name for its candles has expressed criticism regarding the fact that such widespread words are monopolized only by one undertaking.
As a matter of fact, this is completely possible from a legal point of view. According to trademark legislation in most countries around the world, one name can be protected as far as it is distinctive and not descriptive of the goods and services mentioned by the application. Bear in mind that the legal protection of trademarks covers only these precise goods and services, for everything else the relevant name can be used by everyone, especially in cases where it describes the relevant goods or services.
However, one word with meaning can be a trademark for not related goods or services. The classic example is APPLE, which is a trademark for tech products but it cannot be such one for selling apples.
So in the case at hand, the only argument that I can think of against the registration is the probable low distinctive character of Cariad for candles because they are related to a romantic atmosphere, although this would require solid facts to be proved. The main meaning of the word has no direct connection with candles so it is not descriptive per se.
One interesting trademark dispute has come to its end in the UK which targets the question of to what extent donuts are similar to electronic cigarette liquids oils.
The following national combined trademark was filed in the UK for class 34 – electronic cigarettes, electronic cigarette liquids oils and flavorings boxes, cartomisers and atomisers:
Against this application, an opposition was filed by the Australian company Donut King Franchise Pty Ltd based on an earlier international trademark DONUTKING with the UK designation. The mark was registered for classes 29, 30, and 43.
According to the company, both signs were similar, the earlier mark was with reputation that the applicant tried to take advantage of, and there was a passing-off action. What’s more the goods in both marks were complimentary. Some UK vape shops were combined with cafes so both groups of goods were offered in one place. Additionally, it was a common practice for electronic cigarette liquids oils to mimic the taste and smell of food products including donuts.
The UKIPO dismissed the claim for complementary goods finding the submitted evidence insufficient. Only 4 vape shops offered such service and only one of them was within the relevant date range. Apart from this complimentary goods require they to be indispensable or important for the use of each other which was clearly not the case when it comes to electronic cigarette liquids oils or cigarettes and food products.
The common taste or smell is not enough to create such a close connection between goods that are so different in their nature, purpose, and use.
According to the Office, the signs were visually similar to a low level and phonetically and conceptually to a medium to a high level.
Nevertheless, the lack of goods similarity was the reason the opposition was dismissed in its entirety.
The claim for acquired reputation in the UK was not accepted because of insufficient exposure amongst the consumers. Because of the passing-off claim was dismissed too.
One interesting trademark case has been solved by the England and Wales High Court recently.
In 2019, Unilever filed a trademark application for WONDER MUM in class 3 – soaps; perfumery; essential oils; deodorants and antiperspirants; hair care products, etc.
Against this application, an opposition was filed in 2020 by DC Comics, based on an earlier European trademark for WONDER WOMAN in class 16. An acquired reputation for the mark was claimed too.
The opposition was dismissed by the UK Patent Office, which decision was upheld by the Court.
According to the Office, both signs were not confusingly similar. There was only a law degree of conceptual similarity that was not enough to cause confusion in the consumer’s mind.
The evidence for trademark reputation was identified as insufficient. The general statement by DC that WONDER WOMAN is one of the most popular comics characters is not enough in order for a conclusion for the acquired reputation on the territory of the UK to be made.
The data for global sales related to WONDER WOMAN do not show what percentage of them are related to the UK alone.
Another significant problem is the fact that there is no clear evidence that UK consumers perceive WONDER WOMAN specifically as a trademark and not as a title of a movie or a name of a popular character.
This is important because trademark protection cover only signs able to indicate the commercial origin of particular goods and services.
The fact that many people know WONDER WOMAN as a comics character does not mean that they perceive the name as a trademark sign.
The claim for passing off was dismissed as not well-established.
This case shows once again how difficult is trademarks for popular characters to be enforced in reality. Such trademarks have to be used in their role of signs showing trade origin not relying only on their popularity as artistic works.
The popular Swedish plant milk manufacturer OATLY lost a trademark dispute in the UK.
The case concerns a trademark application for PUREOATY for oat milk products filed by the family farm Glebe Farm.
Against this mark an opposition was filed by Swinish company based on several earlier marks OATLY for the same goods.
This case stirred up a lot of of negative comments for the company which was accused that of being bigger tries to block a smaller market competitor as the trademark applicant.
The Court dismissed the opposition in its entirety. Although finding some low level of similarity, the Court consider that from phonetic, visual and conceptual point of view both signs were not similar enough in order to create consumer confusion. The element PURE in the later mark was sufficient to overcome any possibility for such thing.
According to the Court, the common part OAT is descriptive for the relevant products and has not power to contribute to the potential similarity.
The claim that the mark tries to take unfair advantages from the established reputation of the earlier marks was dismissed too.
The claim for passing-off didn’t success either. The Court didn’t find any misrepresentation or misleading action by the Glebe Farm when using their PUREOATY mark.
This case is indicative how tricky could be a company to rely entirely or partially on descriptive terms for its trademarks. The Swedish company was successful before the EU Court regarding its slogan “It’s like milk but made for humans” but in this new case failed. In addition, every attempt for monopolizing descriptive terms can cause negative public reaction that can even threaten the company’s sales. So managing such disputes can be really difficult. That’s why all of this has to be taken into account in the brand building strategy.
One of the biggest software companies in the world Salesforce lost a trademark dispute in the UK.
The case concerns a trademark application filed by Syft Online for “SyftForce” for classes 9 (computer software), 35 (personnel placement and recruitment services, 38 ( telecommunications services), 41 (education services) and 42 (software as a service).
Against this application an opposition was filed by Salesforce based on earlier trademarks for SALESFORCE and SOCIALFORCE for similar goods and services.
The UKIPO focused its attention only on the SALESFORCE earlier mark. According to the Office both signs have some visual and phonetic similarities. However this is not enough for a general conclusion that the mark applied for can create a consumer confusion.
The reason for this was the fact that the shared part in both signs – FORCE has low distinctive character in regard to the goods and services covered by the new trademark application.
Based on this the Office dismissed the opposition in its entirety.
The case is a good example for words with low distinctiveness that are used as trademarks. In some cases such words cannot be protected at all. In other cases, when they are part of complex trademarks with more words or graphics, they can weak their protection abilities.
Amazon won an interesting lawsuit in the UK. Lifestyle Equities accused Amazon of infringement of a trademark BEVERLY HILLS POLO CLUB owned by the company.
The reason for this accusation was the fact that products sold on amazon.com and their prices were been visible for consumers in the UK and EU as a whole.
As it is well-known, a trademark owner has the right to prohibit parallel import and sales of products labeled with a trademark in another country. The logic behind this is that the trademark owner has the right to determine its distribution and price policy for every country where its trademark is registered.
In the case at hand, products with the trademark BEVERLY HILLS POLO CLUB were sold through amazon.com in four main ways:
Amazon Exports-Retail – customers purchased products from amazon.com and they are delivered to the UK/EU;
FBA Export – third parties sell via amazon.com while Amazon manages everything related to the logistics and shipping;
MFN Export – third parties sell via amazon.com but Amazon does not handle the logistics;
Amazon Global Store – consumers on amazon.co.uk can access listings for products on amazon.com.
According to the Court there is no trademark infringement by Amazon.
In two of the options – FBA Export and MFN Export sales are done by the relevant sellers not Amazon itself.
In the rest of the options Amazon is not liable too. The reason for this is that Lifestyle Equities required from Amazon in 2018 to restrict any sales from amazon.com under the same brand in the UK and the EU. Amazon took the necessary technical measures and restricted the sales with some minor exceptions which the Court considered negligible.
The Court concluded that Amazon had no intention for such sales through amazon.com in Europe although the their price were visible for consumers in the EU.
In addition, the Court pointed out the Amazon’s Terms and Conditions according to which in case of purchasing through amazon.com the consumer is the ‘importer of record’ and gained title to the products in the US.