Wood Trade Marks and Design Limited

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.

DOVE is a well known toiletries brand.  To some, ROJA DOVE is a well known perfumier.  What happens when the world of toiletries clashes with the world of perfume?

RDPR had applied to register ROJA DOVE in relation to “Perfumes and perfumery products, aromatic substances for use in the manufacture ofperfumes; perfumed products; perfumed bath foam preparations; perfumed bath salts; perfumed milks; perfumed lotions; perfumed sprays; perfumed creams; perfumed soaps” and “research services into the development of perfumes.”

DOVE is registered by Unilever for a range of goods, including soaps and perfumery.  They formally opposed the registration of ROJA DOVE.  RDPR accepted that Unilever had a reputation for some goods, but notably not perfumery.  Before the UKIPO at first instance Unilever was successful and the application was refused.  RDPR appealed and this was successful – the writing was seemingly on the wall when DOVE was described as a “soap manufacturer”.

Two main points come out of the case: Firstly, just because you have a reputation for some goods for which you have a registration, it does not stand that you can rely upon reputation for other goods; secondly, be careful to ensure a decision is obtained on all grounds – Unilever had only obtained a decision on one ground.  On reversing the decision, the Appointed Person ordered the registration of ROJA DOVE  for some goods and services, seemingly depriving Unilever of the opportunity to get a full decision on the other grounds.