If you have registered your trade mark as a plain word but mainly use it in a stylised format – beware! In the UK, an opposition was dismissed recently because the opponent needed to prove use of a prior registered mark but filed evidence showing use in a different format.
Tesco Stores Limited (“Tesco”) had filed UK Application No 2653270 for the word-mark SIMPLY, for drinks of various kinds in Classes 32 and 33. International Supermarket Stores (“ISS”) opposed. The opposition was based on their prior Community Trade Mark registration of the identical word-mark SIMPLY in Class 35, for: “Retail services in relation to food products, household or kitchen goods.” Tesco was able to require ISS to prove use of their prior mark.
Most of the exhibits filed by ISS were documents in foreign languages, with no translation supplied. In these exhibits, the mark was most often (but not always) used in the following stylised form:
In a decision dated 14 January 2015, Hearing Officer Mr O Morris held that the evidence did not show genuine use of the Opponent’s registered mark, as the Opponent had not demonstrated sufficient use of the plain word-mark “SIMPLY”. Although this word appeared in some of the exhibits, there was no translation of the relevant documents. Accordingly, the context of even this limited use was not clear.
Mr Morris also stated that the stylised form of the mark was much more distinctive than the plain word-mark SIMPLY. He held that this clearly altered the distinctive character of the mark. Accordingly, Mr Morris held that he could take no account of the evidence showing use of the stylised form.
Mr Morris commented that he would have found that ISS had demonstrated genuine use of their prior mark if he had been able to take account of the use of the stylised form of the mark. In the present case, however. this would not have affected the outcome of the proceedings, since Mr Morris went on to say that the opposition would have failed anyway. He found that there was no likelihood of confusion, based on the difference between the goods applied for and the services protected under the registration.
The difference between the mark as registered and as used was not the only decisive factor in this case, but it could easily have been. This is therefore a cautionary decision for trade mark owners who have registered a mark in plain block capitals but primarily use it in a stylised format. Minor stylisation of a highly distinctive word mark will not be a problem. However, your registration might become vulnerable if you use your mark in a “materially different” form.
Key points to take away from this decision:
- It is safest to register a trade mark in the form in which it is actually used. If you have concerns about your existing registrations or are considering what you should register in future, consult your IP advisors.
- File evidence in the language of the proceedings, or supply an appropriate translation.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.