The Final Fantasy’s producer, the Japanese video game company Square Enix, won two invalidation disputes against trademarks Parasite Eve и Parasite.
Both marks have been registered in the UK by Michael Gleissner, a person notoriously known for cases of bad faith registered trademarks in the EU.
According to the Square Enix, its unregistered trademark Parasite Eve has been in use for video games in the UK since 1998. Because of that, it has built a strong reputation amongst the consumers in the country. In light of this, the above mentioned two trademarks are confusingly similar and can damage the reputation of the earlier mark.
The UKIPO agreed with the Japanese company considering the later two trademarks as confusingly similar and registered in bad faith with the purpose to take advantage of the earlier trademark established reputation.
The UK based owner of a small business Tiffany Parmar applied for a UK trademark “Cotswold Lashes by Tiffany” in 2018. The scope of the application covers the following classes: 3 (cosmetics), 41 (education and beauty school services) and 44 (hygienic and beauty care services).
Against this application, the US company Tiffany&Co filed an opposition based on a family of early registered trademarks Tiffany for classes 3, 14 and 41. In addition, a trademark with reputation was claimed due to the fact that Tiffany&Co has been operating in the UK since 1868 making sales for millions of dollars every year.
The UKIPO upheld the opposition with the argument that there is a serious risk for consumer confusion between the signs. The claimed reputation was not taken into consideration, however, because according to the Office, it was stated for goods that are dissimilar with those in the later mark.
The case at hand shows clearly that it is not always possible for individuals to register their personal names as a trademark if they collide with an already established and well-known trademark.
The financial company Monzo withdrawn its UK color trademark application for Hot Coral Pantone 805 C. Monzo uses this color for its bank cards.
Most likely that happened because the company had failed to register identical European trademark earlier. The Board of Appeal of the EUIPO confirmed that Pantone 805 C cannot represent a trademark because of a lack of distinctiveness.
Most consumers will perceive the color only as a decorative element, not as a sign for trade origin.
In a case like that, the onliest chance for the applicant is to prove that the sign has acquired secondary distinctiveness as a result of intense market use. However, that task can be really challenging especially when it comes to one color alone.
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.
Uber won an opposition in the UK against a trademark application ‘ChefUber’ applied for in class 35 – recruitment services in the catering trade.
Against this application, Uber invoked several of its earlier UBER trademarks for the same class including the UberEats trademark used for food delivery. According to the company its marks are similar to the later one in a greate scale.
The Applicant argued that there is no similarity due to the fact that the first part of its mark is Chef, which makes the sign to stand alone.
The Patent Office came to the conclusion that the services between the trademarks at hand are similar or identical.
When it comes to the sign, the Office considered them confusingly similar. The fact that there is a Chef in front of Uber in the later mark is not enough to overcome this possibility because this word is not distinctive and it is even descriptive for the listed services.
What’s more, the Office considered that the later sign tries to take advantage of the Uber reputation as a brand on the market.
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.