Attack of the clone?
Robert Cumming wonders why unfair advantage was not raised by the Applicant. O/329/17, STARVERSE (Invalidity), UK IPO, 13th July 2017.
O/329/17, STARVERSE (Invalidity), UK IPO, 13th July 2017
Key points
- In the assessment of similarity of goods and services, how the mark was used by the Proprietor was irrelevant
- Despite evidence of extensive use, the IPO did not analyse goodwill under s5(4)(a) TMA after finding that there could be no misrepresentation because the services in question were “too far apart”
Here, an invalidity application was filed by Star Television Productions Ltd (the Applicant) against UK trade mark registration No 3084008 (the Registration) in the name of Starverse Media Ltd (the Proprietor). The Registration provided protection for entertainment and broadcasting services, and related goods and services.
The Applicant owns a number of “Star” branded television channels aimed at the South Asian market and received by more than 10 million viewers in the UK. Its Earlier Mark (i) covers broadcasting and entertainment services, and other related goods and services.
The application for invalidity was based on the following grounds:
- Section 5(2)(b) of the Trade Marks Act 1994 (TMA) – the Registration was similar to and covered identical or similar goods and services to the Earlier Mark, and a likelihood of confusion with Earlier Mark (i) existed.
- Section 5(4)(a) TMA – there was goodwill in Earlier Marks (ii) to (vi); misrepresentation by the Proprietor, resulting in damage (or likelihood thereof).
Both parties filed evidence, and the case was decided on the papers. Under s5(2)(b) TMA, the UK IPO found visual, aural and conceptual similarity between the Registration and Earlier Mark (i). Its assessment took into account the nature and intended purpose of the goods and services, and the parties’ common trade channels. Many of the goods and services were deemed to be self-evidently identical or highly similar. Notably, some of the Proprietor’s services were not obviously covered by terms in Earlier Mark (i)’s specification, yet the IPO deemed that there was a medium level of similarity because of the “close connection” of the services.
Despite the Proprietor’s arguments, the IPO did not take account of actual use. Analysis was made in relation to the goods and services as listed in the respective specifications. Accordingly, under s5(2)(b), the Applicant was partially successful, invalidating the Registration in respect of goods and services with at least a medium level of similarity to those covered by the Earlier Mark.
Finding those goods and services invalid under s5(2)(b), the IPO didn’t need to consider s5(4)(a) grounds. For the remaining goods and services where no similarity was found under s5(2)(b), such as marketing and advertising, the IPO went on to consider the grounds under s5(4)(a).
Addressing misrepresentation, the IPO found that, as the services were “too far apart for any economic connection to be made”, members of the public were unlikely to be misled. Given this, it did not assess whether goodwill existed, despite evidence of consumer awareness of the Applicant’s services, media presence, and details of significant annual sales and marketing spend.
Ultimately, the UK IPO only found 60 per cent of the goods and services listed in the Registration invalid. Reduced costs were awarded at 60 per cent.
This case is particularly interesting, because the Applicant did not raise s5(3) arguments (unfair advantage), which might have changed the outcome in relation to the non-similar services.
Robert Cumming is a Partner at Appleyard Lees IP LLP, Leeds
Cherry Shin, an IP Administrator at Appleyard Lees IP LLP, was co-author.