A recent decision of the UK IPO demonstrates the importance of filing evidence of reputation, if available, as well as sufficient evidence of use when an opposition relies on a mark which has been registered for more than 5 years.
Michael Corrado Jackson and Sajid Javed (the Applicants) applied jointly for UK Application No 3298871 for the “Mr Whippy ice cream” Logo shown below.
The application was for a broad range of Class 30 goods including ice cream and services in Class 43 including ice cream parlour services.
Unilever Plc opposed this application, relying on registrations of WHIPPY and MR. WHIPPY. Both of these had been on the Register for more than 5 years prior to the publication date of the contested mark so the Applicants were able to require Unilever to submit proof of use.
No use of “WHIPPY” on its own was submitted. The Hearing Officer held that there is a distinctive conceptual difference between “MR. WHIPPY” and “WHIPPY”: the former conveying the idea of a man with the surname “WHIPPY” while the latter has no such concept. Accordingly, the Hearing Officer held that Unilever could not rely on use of MR. WHIPPY as showing use of the registered mark WHIPPY, so the opposition failed in so far as it relied on the earlier mark WHIPPY.
The Hearing Officer recognised a number of deficiencies in the evidence submitted by the Opponent to show use of MR. WHIPPY. Nevertheless, taking this evidence in the round, the Hearing Officer found that on the balance of probabilities the mark had been put to genuine use by the Opponent, or with its consent, within the relevant period in relation to ice cream. Unilever’s registration of MR. WHIPPY covered additional goods in Class 30 but the Hearing Officer held that, having regard to the goods for which genuine use had been shown, a fair specification would be just “ice cream”.
The Hearing Officer held “ice cream” to be identical or highly similar to some of the Class 30 goods applied for under the contested mark, and to have a low degree of similarity with some of the other goods and services applied for. No similarity was found with some of the other goods and services.
Overall, the marks were found to be similar and the Hearing Officer found a likelihood of direct confusion in relation to the identical and highly similar goods. For the goods and services where a low degree of similarity had been found, the Hearing Officer considered that the average consumer (in this case, the general public) would be likely to believe that the respective goods and services would come from the same or linked undertaking(s), so indirect confusion might arise. However, the Hearing Officer found that there would be no likelihood of confusion in relation to the goods and services which were not found to share any similarity with “ice cream”.
The Hearing Officer held that although the evidence submitted by Unilever was sufficient to show genuine use for “ice cream”, it was not sufficient to show that the distinctiveness of the MR. WHIPPY mark had been enhanced through use. It is possible that the decision in relation to some or all of the goods and services which were not found to be similar to “ice cream” might have been different if Unilever had filed evidence showing that MR. WHIPPY had acquired a significant reputation and goodwill in the UK through substantial use. If available, such evidence might have entitled Unilever to broader protection due to the enhanced distinctiveness of the prior mark.
On the basis of the evidence which was filed, the opposition partially succeeded in relation to some of the goods and services but failed for others. The contested application was therefore allowed for a restricted specification.
If you own a registered trade mark and are considering opposing a later application, it is important to consider whether you can show genuine use of your own mark for the relevant goods/services if your mark has been registered for more than 5 years. Assuming that you have used your mark, it is also important to consider whether you may be entitled to broader protection under your mark due to enhanced reputation as a result of that use. If so, be aware that the level of evidence needed to show genuine use may not be sufficient to show enhanced reputation. Reddie & Grose attorneys are happy to advise on these types of issues.
[Unrelated fun fact about MR. WHIPPY ice cream; Mrs. Thatcher was credited as being part of the team who invented this, as mentioned by the Bishop of London at her funeral. Others have disputed this claim, although she was certainly a food research scientist for a time at J Lyons, which was at the forefront of introducing soft-serve ice-cream to the UK.]
Trade mark Decision BL Number: O/684/19
Decision date: 11 November 2019
Hearing officer: Mrs B Hedley
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 any action in reliance on it.