When branding backfires: how weak evidence led to the UKIPO ghosting the opponent

A recent decision of the UK Intellectual Property Office ("UKIPO") has shed light on how evidence of reputation can determine the fate of a trade mark dispute and underscores that trade mark protection is not assured simply because two marks share a common element, even a prominent or distinctive one.

What was the dispute about?

The dispute concerned an opposition filed by Synergy Project Management LLC ("Synergy Project") against Singh's Dynasty Ltd ("Singh Dynasty") application to register the mark Ghost Mary for a range of smoking and vaping-related goods.

Synergy Project opposed the application on three grounds under the Trade Marks Act 1994: likelihood of confusion (section 5(2)(b)), reputation and unfair advantage (section 5(3)) and passing off (section 5(4)(a)), relying on its trade mark registrations for GHOST covering vaping products and its unregistered rights in the GHOST brand.

Why the opposition failed

1. Consumers would notice 'MARY', which meant there would be no confusion

Although the marks shared the word GHOST, the UKIPO concluded that consumers would not disregard the second word, MARY. The combination GHOST MARY would naturally be read as a phrase referring to a "ghost named Mary”, creating an overall impression that differed materially from the single word GHOST.

Even though the goods were identical or highly similar, the additional element was enough to avoid both direct confusion (mistaking one mark for the other) and indirect confusion (assuming the marks originate from related brands).

The decision noted that GHOST is an ordinary dictionary word rather than an invented or inherently distinctive term. That matters because the more commonplace the shared element, the harder it is for a brand owner to claim exclusivity or to argue that consumers would expect a brand extension. This is particularly significant given that the opponent failed to meaningful explain why buyers would think GHOST MARY was a new product from their business, and the UKIPO declined to construct an argument on their behalf.

2. The opponent's evidence of reputation was insufficient

Synergy Project sought to rely on the reputation of its GHOST branded disposable vapes and e-liquids, submitting screenshots, turnover figures, exhibition materials and social media activity. However, much of this was found to be limited in scope or probative value. Issues included short periods of use (largely confined to a single year), low advertising expenditure in the UK, undated or unclear documentation and only limited evidence of consumer recognition.

While Synergy Project reported around £2 million in turnover for 2023, the UKIPO regarded this as a modest share of the UK’s sizeable vaping market. Taken together, the evidence fell short of demonstrating a qualifying reputation at the relevant date.

3. No passing off; no misrepresentation and no damage

The UKIPO accepted that Synergy had generated a degree of goodwill in the UK through sales of its GHOST vaping products. Nonetheless, it concluded that GHOST MARY was not sufficiently similar to amount to a misrepresentation. Without misrepresentation, the passing off claim could not succeed and there was no basis for a finding of damage.

Key takeaways

• Common dictionary-words are hard to ring-fence

Even when used for identical goods, an ordinary word such as GHOST is unlikely to confer broad exclusivity over all marks containing that term. Businesses adopting common word marks should reinforce distinctiveness through consistent branding, strong visual identity and sustained market presence.

• Additional elements can be decisive

The inclusion of MARY created a conceptual difference between the marks. Assessing how the average consumer will naturally understand a composite mark is essential, as an added element with clear semantic meaning can materially reduce the likelihood of confusion.

• Evidence of reputation must be clear and robust

To rely successfully on a reputation-based ground, brand owners need evidence that demonstrates more than commercial activity. Sales, marketing spend and market presence must be supported by dated and verifiable materials that show the mark is recognised by the relevant public.

• Arguments need to be properly set out

Synergy Project had not clearly explained why consumers would make a link between the brands. The UKIPO highlighted these weaknesses. Effective oppositions require targeted grounds and supporting evidence. Making claims without well-developed arguments can undermine the overall position.