Ford puts the brakes on Fraud Music's application
The Ford Motor Company has been successful in an opposition to prevent registration of the trademark FRAUD (and device), depicted below, filed by Fraud Music Company for clothing, headwear and footwear in Class 25.
It seems this trademark hit the UKIPO’s blind spot and was accepted for registration despite indicating an illegal activity, and should have been refused registration on the basis that it is contrary to public policy or to accepted principles of morality. So it was left to Ford to challenge it on the basis of its earlier trademark rights in its FORD logo:
Ford’s grounds for opposition were broad and included:
- likelihood of confusion under Section 5(2)(b) of the Trademarks Act 1994;
- damage to reputation under Section 5(3) of the act; and
- common law rights under Section 5(4)(a) of the act.
The hearing officer took the view that Ford’s strongest position was relying on its reputation and asserting that Fraud Music’s use would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier FORD logo.
On this basis, Ford claimed that use of Fraud Music’s mark would:
- dilute the distinctive character of its FORD logo;
- reduce its sales because its mark would be ‘tarnished’ due to the negative associations with the word ‘fraud’;
- impact negatively on its image if Fraud Music’s goods were of poor quality; and
- make it easier for Fraud Music to sell its goods because of the link made with Ford’s trademarks, tailgating on Ford’s promotional efforts, power, reputation and prestige.
Ford was in the driving seat when it came to reputation and filed evidence to show it had sold over 400,000 new vehicles in each of the five years preceding the date of Fraud Music’s application. Ford’s Fiesta model was the top-selling car in the United Kingdom in 2012 and its Focus model was the third best-selling car in the same year. Ford also sponsors a number of major sporting events in the United Kingdom, including the UEFA Champion’s League (soccer) which, for its 2012 final, attracted over six million viewers in the United Kingdom alone and over 14 million viewers in 2006 when Manchester United played Chelsea. The hearing officer was persuaded by this evidence and concluded that a large proportion of the UK public knew Ford’s oval trademark.
Ford also had to show a link between the trademarks, and the hearing officer acknowledged its established reputation, the striking similarities between the trademarks and, despite the goods being dissimilar (vehicles v clothing), the ultimate consumers were the same.
The hearing officer considered detriment, and said that whilst Fraud Music’s goods themselves were not considered offensive, it was the unpleasant connotations of the word ‘fraud’ which made their wheels come off. Ford uses its FORD logo to communicate with consumers and an association with the word ‘fraud’ would be a ‘car crash’ for its brand.
Fraud Music did not comment on its choice of mark, only to say that it is a ‘business word’ and could not explain why the get up so clearly mimicked Ford’s famous logo. The hearing officer found that there was nothing accidental with the choice of trademark and that it was its pure intention to bring Ford’s logo to mind and increase its own sales.
All the conditions for detriment had been met and Ford was shown a chequered flag: Fraud Music’s application was refused in its entirety.
A fine victory for Ford, despite the initial stall from the UKIPO. Any appeal is unlikely to even reach starters orders.
Helen Cawley, D Young & Co, Southampton
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10