COMPARE THE MARKET held to have acquired distinctive character
Readers in the United Kingdom will be familiar with the sight of ‘Meerkovian’ meerkats being used to advertise the services of the price comparison website comparethemarket.com; and the fictional tenor Gio Compario (complete with stylised moustache) that has for a number of years been used to advertise the services of another price comparison website, gocompare.com. These two competitors battled it out before the UK Intellectual Property Office over the former’s application for the word mark COMPARE THE MARKET.
Comparethemarket.com is operated by BISL Ltd, which is in turn owned by the BGL group. This latter entity has registered the trademarks COMPARETHEMARKET and COMPARETHEMARKET.COM for the services of a price comparison website. On June 21 2010 the BGL Group also sought to register the words COMPARE THE MARKET in Classes 35 and 36, including for the provision of “price information relating to the supply of consumer goods and services, including insurance, telecommunications services, utilities and financial products”. On October 8 2012 GoCompare.com filed an opposition to the mark, arguing that it did not meet the requirements of Sections 3(1)(b) to (d) of the Trademarks Act 1994.
The matter was heard on February 21 2014, with the decision given on April 7. As there was no suggestion that GoCompare’s case under Section 3(1)(b) of the act could succeed independently of its case under Section 3(1)(c) or 3(1)(d), it was only necessary for the hearing officer (Allan James) to focus on those two provisions. Both grounds of opposition failed. While this decision is quite fact-specific, it will no doubt be of interest to those brand owners holding marks based upon domain names considering applications for wider protection for now established businesses.
When addressing Section 3(1)(c) of the act, the hearing officer had little difficulty in accepting that an average consumer paying a normal degree of attention would find 'compare the market' when used in association with a price comparison website as capable of being descriptive. The mark was therefore found to be prima facie excluded from registration. However, while the mark was capable of being descriptive, although the price comparison market had been operating since at least 2002, there was no evidence of anyone other than the BGL Group having used the term 'compare the market' prior to Comparethemarket.com coming into the price comparison market.
'Comparethemarket.com' was found to be highly distinctive of the BGL Group’s services, and on the evidence, the hearing officer found that the mark COMPARE THE MARKET may also have become distinctive. The hearing officer recited a number of factors from the evidence that justified this conclusion, a lot of which related to press commentary and Google analytics of searches for 'compare the market'.
The interpretation of the Google analytics and click-through rate was an issue of contention between the parties, with GoCompare continuing to argue that the search term was simply being used as a generic search for comparison websites. However, having found that there was no evidence for any generic use prior to Comparethemarket.com entering the then five-year-old price comparison market, the hearing officer considered that use to be “unlikely”. The hearing officer also considered that any generic use would in any event more likely be associated with the particular goods or services that the consumer was wanting to compare (ie, ‘compare the car market’ as opposed to just searching for ‘compare the market’).
In coming to his decision under Section 3(1)(d) of the act, the hearing relied upon two key points:
- That “there is no established use of the phrase ‘compare the market’ on websites, or anywhere else, prior to the applicant first using 'comparethemarket.com' in 2007 as the name of its price comparison website”.
- While GoCompare presented evidence of the use of 'Compare the market' by third-party price comparison sites between 2007 and the date of the application in 2010 (such as by 'carinsurancequotes.com' and 'ukenergy.co.uk'), the hearing officer found that this use was not a relevant use for the purposes of Section 3(1)(d), and that in some of GoCompare’s cited cases, the use was actually contrived so as to catch the attention of consumers searching for Comparethemarket.com.
Overall, what looks like having saved the COMPARE THE MARKET mark was:
- the lack of any evidence of use of the phrase 'compare the market' in association with price comparison services before the relevant date; and
- consumers reading domain names that comprise a series of words as separate words, such that 'compare the market' became associated with BGL Group’s business through use of COMPARETHEMARKET.COM.
Robert Lundie Smith, EIP, London
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