Exxon claws its way to victory in 'Tiger' mark cat fight

In Kellogg Company v Exxon Corporation, a hearing officer at the UK Trademarks Registry has refused Kellogg Company's opposition to Exxon Corporation's application to register a mark featuring a cartoon depiction of a tiger.

Exxon applied to register the mark for café, cafeteria and restaurant services, and petrol station services. Kellogg filed an opposition based on its series of 'Tony the Tiger' device marks registered for, among other things, breakfast cereals in Class 30 of the Nice Classification. It made the following arguments:

• Exxon's mark was similar or identical to Kellogg's trademarks, which would result in a likelihood of confusion;
  
  
• use of Exxon's mark would constitute passing off; and
  
  
• use, without due cause, of Exxon's mark would take unfair advantage of, or be detrimental to, the reputation or distinctive character of Kellogg's marks.
  

Before the hearing officer, Kellogg relied on evidence that it had filed in a previous case to demonstrate the reputation in its marks. The hearing officer accepted that the evidence showed substantial reputation in Kellogg's 'Tiger' device. However, he rejected survey evidence that consisted of 80 responses where members of the public were asked whether they identified a particular device with the 'Tony the Tiger' character. The hearing officer noted that this device was different from Exxon's mark and so the survey was irrelevant.

On the question of similarity and confusion, the hearing officer compared the marks and the respective goods and services. He noted that the average consumer would see Exxon's mark as being reminiscent of Kellogg's tiger given, for example, the tilt of the head and the direction that the characters were looking. However, the differences in the respective goods and services covered by the marks meant that there was no likelihood of confusion.

He then considered passing off. He found that although Kellogg had demonstrated goodwill, he could not find on the evidence that there would be misrepresentation if Exxon used its mark, particularly taking into account the different fields of activity. Finally, he rejected the argument that the use of Exxon's mark would take advantage of, or be detrimental to, the distinctive character or repute of Kellogg's marks. He took the view that Kellogg had not dismissed the evidential burden that rested with it. He therefore rejected the opposition in its entirety.

Chris McLeod, Hammonds, London