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

I love to review trade mark cases – probably the height of geekdom – and two things come out nearly every time someone’s application to register a trade mark is opposed. One of those things is that the person defending their application complains about how many similar marks are on the register; the other thing is that they say that the opposing party only uses their trade mark in a particular market area (i.e. they sell as a luxury product as opposed to a run-of-the-mill high-street product).

This is what the applicants for the mark ICE SCREAM for clothing/footwear/headwear said when the Billionaire’s Boys Club opposed their application based upon their own rights in ICE CREAM for clothing/footwear/headwear http://tinyurl.com/ykzvayb . Of course, the UK Registry ignored that … if you are going to try and defend, prove that there are lots of earlier similar marks on the market, not on the register.  It’s not even worth trying to say that your clothes will be sold at a lower price that the other side’s clothes – the Registry have to consider the objection “on paper”

Of course, that doesn’t mean you can’t try to negotiate on that basis with the other side – just don’t expect the trade mark offices to take it into account!