CTM opponent successfully demonstrates passing off

European Union
In UK Gold Services Ltd v Dave Soho Ltd (Case B-1294448, January 24 2011), the Opposition Division of the Office for Harmonisation in the Internal Market (OHIM) has rejected UK Gold Services Ltd’s application for the registration of the word mark DAVE on the basis of the common law rights of Dave Soho Ltd.

In July 2007 UK Gold applied to register DAVE as a Community trademark in respect of goods and services in Classes 9, 16, 28, 35, 38 and 41 of the Nice Classification, including "computer and video games, printed matter, advertising, broadcasting, communications and telecommunications, digital communications services, networking of television programmes, films, distribution of television programmes".

Dave Soho opposed the application, relying on its rights in the unregistered mark DAVE, the trade name Dave and the company name Dave Soho Ltd, all used in connection with goods and services in Classes 9, 16, 35, 38, 41 and 42. It argued that its use of DAVE was of more than mere local significance, which conferred on it the right to prohibit the use of a subsequent trademark under national law (ie, the English law against passing off). 

Dave Soho filed a substantial amount of evidence to demonstrate its earlier rights. It argued that:
  • the signs were identical;
  • UK Gold was fully aware of its existence when it filed the application; and
  • DAVE was a highly distinctive mark for the goods and services in question. 
It claimed substantial goodwill and reputation in its business operating under the DAVE mark and that damage existed.

UK Gold argued that Dave Soho was a brand consultancy and that its business did not extend to all the goods and services claimed by it. UK Gold claimed substantial goodwill and reputation existing since October 2007 and submitted that Dave Soho had failed to produce any evidence of actual confusion or misrepresentation. Further, it stated that Dave Soho had not proven damage. Therefore, Dave Soho had failed to prove goodwill, misrepresentation and damage, which is needed to show passing off.

OHIM considered the evidence submitted by Dave Soho to demonstrate its earlier rights, claiming that it had been using the mark since 2003. The evidence included:
  • extracts from the BBC News website from 2004 confirming the launch of the 'Advert Channel', showing the connection between a TV channel and an advertising agency;
  • news articles on its activities as co-producer of television programmes;
  • lists of marketing industry awards won;
  • invoices in respect of its various projects, which included the creation of computer games and online games, short films, podcasts, advertisements and sound recordings; and
  • details of its projects with companies such as Nokia.
OHIM found that Dave Soho had submitted sufficient material to prove that it did have goodwill and reputation in its business in the United Kingdom which predated UK Gold’s date of application. The evidence showed "a significant commercial volume of the use of the earlier signs", which was "continuous and frequent". 

OHIM noted that the law of passing off was "complex" and that, to succeed, the owner of an unregistered mark had to demonstrate the existence of goodwill, misrepresentation and damage. Based on the evidence, OHIM concluded that Dave Soho had goodwill in the mark DAVE.

As for misrepresentation, OHIM said that the test was whether a substantial number of consumers would believe that Gold UK's goods or services were that of Dave Soho, or were somehow connected in the course of trade to Dave Soho. OHIM found that the goods and services were nearly all either identical or similar, except for UK Gold's "decorative magnets" in Class 9 and "stationery, pens, pencils, pencil sharpeners, erasers, pen and pencil cases; writing implements" in Class 16, none of which were listed by Dave Soho in its opposition and all of which had, according to OHIM, a "different origin, nature and intended purpose than any of the goods in the same class of the earlier rights". OHIM's conclusion was that, because the signs were identical and the goods and services were either identical or similar, the public might be led to believe that the goods and services offered by UK Gold originated from Dave Soho. 

As regards damage, OHIM said that, because consumers might reasonably assume that the goods and services had the same commercial origin, UK Gold would benefit from the goodwill of Dave Soho's earlier mark. Therefore, use of the sign DAVE by UK Gold would "result in a potentially injurious association with the earlier signs, the diversion of sales or the dilution of the goodwill".

OHIM concluded that there was passing off in respect of all the goods and services it had found to be identical or similar, which was most of them. Therefore, the opposition succeeded for the contended goods and services.
 
Cheng Tan, McDermott Will & Emery UK LLP, London

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