Mark for clothing held to take unfair advantage of white goods mark
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Taking into account the judgment of the Court of Justice of the European Communities in L'Oréal v Bellure (Case C-487/07), the appointed person has overturned a hearing officer’s decision rejecting an opposition by Beko Plc against Socks World International Ltd's application for the registration of the stylised trademark BEKO SPORT, finding that use of the mark in the United Kingdom would take unfair advantage of the distinctive character or repute of Beko's earlier BEKO marks under Section 5(3) of the Trademarks Act 1994 (Socks World International Ltd and Beko Plc (BL O-307-10, August 20 2010)).
Socks World applied for the registration of the following UK trademark in Class 25 of the Nice Classification for "clothing, footwear and headgear":
Beko, part of a substantial Turkish-based group of companies supplying white goods throughout Europe under the BEKO mark, opposed the application under Sections 3(6) (bad faith) and 5(3) (unfair advantage) of the act. It based its opposition on three UK registrations for BEKO in Classes 7, 9 and 11. Evidence showed that the mark was first used in the United Kingdom in 1991 as a word mark and in a distinctive, stylised font. Since then, there had been substantial use on white goods. Beko also claimed a reputation in sport due to its sports sponsorship arrangements, in particular with Millwall FC, which had featured the BEKO mark prominently on players' shirts.
The hearing officer, making the decision prior to L'Oréal, rejected Beko's opposition.
On appeal, the appointed person agreed with the hearing officer’s finding that BEKO’s earlier marks would be known by a significant part of the relevant public and have a reasonably strong reputation.
The appointed person confirmed that the marks were "similar to a very high degree", as the only difference between BEKO SPORT and the earlier BEKO marks was the addition of the word 'sport'. In every other respect (particularly the font), the marks were virtually identical. Further, there was no explanation from Socks World as to why it had used the same font.
The appointed person agreed with the hearing officer that, while Beko had promoted its marks in a sporting environment through advertising and sponsorship, it did not have a sporting reputation as such. However, the “heart of the objection” was that the applicant sought to register "the identical mark of the shirt sponsor of a football club". Accordingly, what mattered was the sporting connection with clothing that the sponsorship of Millwall FC had produced.
The appointed person further found that the case based on Beko's reputation in the BEKO mark in respect of household goods had not been sufficiently analysed. Following the L'Oréal judgment, the appointed person could now give greater weight to Beko's evidence that Socks World intended to benefit from the reputation of Beko's earlier BEKO marks, the intention factor now being relevant to the question of unfairness.
The appointed person considered whether:
- the evidence showed that use by Socks World of the mark applied for would obtain an advantage by benefiting from the power of attraction, the reputation and the prestige of Beko's earlier marks, and exploit Beko's marketing efforts without making any such efforts of its own, without compensation for any loss caused to Beko or for the benefit gained by Socks World; and
- Socks World was attempting to ride on the coat-tails of the reputation of Beko's earlier marks.
Allowing Beko’s opposition under Section 5(3), the appointed person held that unfair advantage had been taken of Beko’s marks. He emphasised the virtual identity of the respective marks, having particular regard to:
- the specific font and design chosen by Socks World, which had been inadequately explained; and
- the fact that it was not possible to think of any other reason for the adoption of that specific mark other than to signal a connection with Beko and the reputation in its earlier marks.
The fact that the sponsorship deal with Millwall FC meant that the BEKO marks were featured prominently on player’s shirts brought Beko’s reputation in white goods closer to sports clothing and, consequently, the goods covered by Socks World’s application.
Although it was not strictly necessary to consider the bad-faith aspect of Beko’s claim, the appointed person found that the evidence showed that Socks World knew of Beko's marks and, specifically, that the mark was featured on football shirts. However, there was no evidence that Socks World intended to deprive Beko of use of the BEKO mark or to use the mark so as to extract money from Beko. Consequently, not all the ingredients for a finding of bad faith were present and the hearing officer's decision in this respect was upheld.
In essence, the lack of evidence as to why Socks World adopted the BEKO SPORT mark and used exactly the same font as Beko's registrations (ie, an examination of Socks World's intentions at the time the application was made), coupled with the fact that the marks were virtually identical, was key to Beko's success.
Désirée Fields, McDermott Will & Emery UK LLP, London
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