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22 January 2024
A recent EU trade mark judgment (of 17 January 2024) highlights the sort of things that anyone seeking to oppose a trade mark should bear in mind before they proceed, whether in the UK, EU or elsewhere. It also shows the importance of getting legal advice on the merits or otherwise of any proposed course of action.
Mr J owned the trade mark “INSPIRED” in class 35 covering ‘Business administration; business management; business management and business administration (office functions); personnel management; commercial or industrial management assistance; advertising; retailing, wholesaling and sale via the internet of footwear, clothing, underwear and headgear’.
The Animal Store, Food and Accessories, SL applied for the EU trade mark “WILD INSPIRED” in class 35 for ‘Wholesaling and retailing in shops and via global computer networks, in relation [to] the following goods: foodstuffs and beverages for animals’.
Mr J filed a notice of opposition to The Animal Store’s trade mark application. His case was the likelihood of public confusion because the services in class 35 were similar.
Existing case law states: the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion.
Having regard to the different nature and intended purpose of the goods to be retailed (clothing goods for humans, on the one hand, and edible goods for animals, on the other), the retailing services at issue were adjudged to have a different subject matter. here was a different customer base in non-competing sectors and different outlets for purchase of goods/services.
The two trade marks could therefore co-exist and Mr J failed to stop the progress of WILD INSPIRED to registration.
After several appeals, and several sets of legal costs, the General Court of the EU in Luxembourg confirmed what, to many, may have appeared obvious from the start. Unsurprisingly, Mr J failed in his submission that “clothing and footwear” in his own mark could apply equally to humans and animals.
This case lasted for approximately 3 years. It is vital to get expert legal advice as soon as possible when faced with trade marks and the question of whether to oppose them, or to defend an opposition.
Contact our Legal 500 Recommended Lawyer Brian Levine at brian.levine@battens.co.uk for all your trade mark and IP issues.
