Wood Trade Marks and Design Limited

ICE CREAM – for those in the know, it’s a very cool brand (excuse the pun).  But their attempt to protect the brand in the UK failed due to an earlier registration of HIGH HEELS AND ICE CREAM.  The UK Intellectual Property Office took the view that the marks were similar, pointing to the fact that the ICE CREAM element of  HIGH HEELS AND ICE CREAM has an independent role in the mark (since you don’t tend to put the two together).  On that basis, the opposition brought by the owner of that brand succeeded.

I’ve some sympathy for Pharell and the other members of the Billionaire Boys Club (who use the ICE CREAM brand).  I suspect this will not be the end of the matter, however, as I can see easy ways to turn it round and where money is involved, there is often a way…

If you want to read the entire judgment, go here: http://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results/o21010.pdf

For those that don’t know who the Sugababes are, they are a UK pop group.  They have had a lot of changes of personnel, so it’s a ripe one for a dispute over who owns the name.

Right now we have 4 different people arguing over the name:

Mutya Buena – one of the founder members

Mutya Buena, Keisha Buchanan and Siobhan Donaghy – the original line-up

“Sugababes” – presumably the current line-up

Island Records – the record company of the current line-up.

The state of play is that Mutya has made an application to register SUGABABES in her own name, as have the original trio and “Sugababes”.  “Sugababes” and Island Records have formally objected to Mutya’s application.  I see a few issues in the official papers:

1) You have to be a legal entity (a company, an association, etc) or a person to own rights and to enforce them.  “Sugababes” seems to be neither, so it seems like their applications and their opposition must be rejected on that ground – the original line-up got it right by putting all their names (the other common option being to register a company);

2) Island Records and “Sugababes” seem to disagree as to what the Sugababes have done, and what rights exist in the SUGABABES name.  I’d be interested to see what rights Island Records have anyway in their artist’s names…

This could get very interesting (for lawyers, at least!)

Meetingpod. To my mind not linked with Apple, but the UKIPO disagrees. They found that MEETINGPOD and POD/IPOD are confusingly similar – http://tinyurl.com/y8c4mqe

Now, I can understand why Apple would oppose the registration of this trade mark – they applied to register the mark for electronic apparatus and software amongst other things – but I am not sure the public would be confused. The representatives defending the application showed that there were lots of POD marks on the register, but this was not enough.

It’s a tricky one, but I think the wrong decision was made. Apple argued as a secondary point that the use of the mark would take advantage or be detrimental to the reputation and distinctiveness of the POD/IPOD mark. This wasn’t considered (as Apple had already won) – I think this is the real point. It’s a shame they didn’t a decision on this, but Apple will be pleased that the UK IP Office accepted as on juducial notice that the mark IPOD is extremely well known in the UK – that should save them some time and expense in the future.

Logos of single letters can be difficult to deal with… there are only 26 letters and only so much you can do with a letter in a logo.  If you have a logo containing a letter registered, how strong are your rights?

The answer to this question was the concern of case O/083/10 of the UKIPO.  Morrison Supermarkets Plc (a larger chain of supermarkets, for those outside the UK) applied to register the following logo:

As is the way with supermarkets, they applied to register for a wide variety of goods and services, including financial services.  The application was opposed insofar as it related to financial services by Esco Marginalen AB, the owners of this mark: 

Esco argued that the application was confusingly similar to their registration, which covered financial service and monetary affairs.  Whilst the hearing officer found that the respective services were identical and/or similar, and whilst he perceived a level of similarity in the marks, in his view no confusion would occur.  This was partially due to the fact that the services in question were financial services (where consumers would pay more care than other goods or services) and partially because the logo was not particularly distinctive of itself and so (without proof of additional distinctiveness through use) it was his view that consumers would not assume a connection as there were differences in the marks.

The moral of the story?  If you have a mark which is inherently weak, try to prove that your mark is stronger because of the use you made of it.  If you are the defending party, try to show that consumers are discerning.

Next Retail Limited applied to register the mark ANGEL for clothing, footwear and headgear in the UK.  Major League Baseball Properties opposed this application  on the basis that they had a registration for this mark:

Next argued that the marks were not similar, but the UKIPO found that they were, and ordered that the application be refused.  Another example of an occasion where clearance searches might have prevented an applicant wasting their time with an application!