Еlectronic cigarette liquids oils are not similar to donuts – DONUT KING lost a dispute in the UK

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.

Source: WTR (by Alison Brennan and Louise Carey – Burges Salmon LLP) for Lexology.