The UK airline company EasyGroup won an invalidation procedure against the UK registered trademark EZY.COM in class 41.
The base for this invalidation was earlier trademarks EASY.COM and EASYJET for class 41.
According to the company, there was a serious possibility for consumer confusion including because of the fact that EASYJET has a reputation in the UK and because EZY was the airline code of the company.
The UKIPO upheld the opposition confirming the possible consumer confusion due to the phonetic and visual similarities between the signs which are registered for identical and similar services.
Uber succeeded in an opposition procedure against the following UK trademark application:
This sign was filed for the following goods and services:
In Class 9: Mobile phones and accessories; batteries; battery charges; media for storing
information, data, signals, images and/or sounds; photographic apparatus and instruments; parts and fittings for the aforesaid goods.
In Class 35: Retail services connected with the sale of mobile phones and accessories;
batteries; battery charges; media for storing information, data, signals, images and/or sounds; photographic apparatus and instruments; parts and fittings for the aforesaid goods”.
In Class 38: Advisory and consultancy services relating to communications apparatus,
equipment and accessories; rental and hire of communications apparatus, equipment, and accessories; provision of information relating to communications apparatus, equipment and accessories”.
Uber invoked a family of earlier Uber trademarks against this application, for the same classes, stating possible consumer confusion.
According to the UKIPO the goods and services of the marks were identical or complementary.
The applicant tried to claim that Uberfone poses a specific meaning in German which is to something “superb or happy”.
The Office dismissed it considering that the German language is not so popular in the UK and most of the people wouldn’t be able to get the meaning.
Taking into account the phonetic and visual similarities between the signs, the UKIPO upheld the opposition.
The UK telecom O2 successfully won an opposition against a UK trademark application for Indigo Blue applied for class 41:
Arranging and conducting of concerts; Services for the showing of video recordings; Services providing entertainment in the form of live musical performances; Showing of prerecorded entertainment; Singing concert services; Song publishing; Song writing services; Songwriting; Sound recording and video entertainment services; Sound recording services; Sound recording studio services; Music concerts; Music entertainment services; Music festival services; Music performance services; Music performances; Music production; Music publishing; Music publishing and music recording services; Music publishing services; Music recording studio services; Musical concert services; Musical concerts by radio; Musical concerts by television; Musical entertainment services; Musical performances; Entertainer services; Entertainer services provided by musicians; Entertainment; Entertainment by means of concerts; Entertainment by means of radio; Entertainment by means of roadshows; Entertainment by means of telephone; Entertainment by means of television; Entertainment in the form of live musical performances (Services providing – );Entertainment in the form of recorded music (Services providing -);Entertainment in the form of television programmes (Services providing -);Entertainment services; Entertainment services for matching users with audio and video recordings; Entertainment services for matching users with computer games; Entertainment services for producing live shows; Entertainment services for sharing audio and video recordings; Entertainment services in the form of concert performances; Entertainment services in the form of musical vocal group performances; Entertainment services performed by a musical group; Entertainment services performed by musicians; Entertainment services performed by singers; Entertainment services provided by a music group; Entertainment services provided by a musical group; Entertainment services provided by a musical vocal group; Entertainment services provided by performing artists; Entertainment services provided by vocalists.
O2 invoked rights over several of its earlier EU trademarks for INDIGO and INDIGO2 for the same class.
According to the UKIPO, both signs are very similar because of the word INDIGO. The difference between them is the word Blue and the number 2.
From a conceptual point of view, the trademarks are almost identical bearing in mind that for some of the consumers Indigo is a shade of blue. A slight difference can arise only if Indigo is perceived as purple. However, even in that case, both colors are closed.
Taking into account that the first part of the marks is identical, the UKIPO uphold the opposition in its entirety.
This is yet another case which comes to show how important is preliminary trademark clearance search. This search can help a lot in the assessment of the chances one sign has to be registered as a trademark and from another hand to avoid eventual disputes.
It is always advisable to do your homework before to file an application. This will save you time and money.
The English High Court has dismissed an appeal from Trump International company (owned by German national Michael Gleissner) against the UKIPO decision to refuse registration as a trademark for ‘Trump TV’ in classes 38 and 41.
The US company DDTM Operations, which manages Donald Trump’s IP portfolio, filed an opposition against this mark based on alleged bad faith application. According to DDTM Operations, this trademark tries to take advantages from the reputation of the US President.
The UKIPO agreed with this claim and refused the application taking into account the Gleissner’s previous attempt to register similar signs.
The Court upheld this decision concluding that the applicant failed to give any reasonable arguments to support an eventual bona fide nature of its application.
The UK Patent Office published some clarifications what would happen with all European trademarks in case of a hard Brexit without a deal with the EU.
In that case, The UK will recognize all registered EU trademarks and will transform them into national trademarks. They will be indicated with UK009 in front of their EU numbers.
There will be no cost for the relevant owners and as little administrative burden as possible. However, the Patent Office will not issue trademark certifications for them. Information for these marks will be available in the UK trademark database.
When it comes to EU applications for trademarks, their owners will have up to 9 months to file identical applications in The UK. In that scenario, they will use the same priority date from their EU applications.
The full text can be found here.