A rainy day for Got You Covered

The UK Intellectual Property Office recently found a likelihood of confusion between trade marks containing images of umbrellas. Often it can be more difficult to enforce rights in images as opposed to words, as the subject can be represented in many ways. 

The case

The applicant, Got You Covered Limited ("Applicant"), applied to register a series of six trade marks for GOT YOU COVERED featuring an image of an umbrella (as set out below) covering classes 35, 36, 41 and 45 (the "Application") such as advertising, insurance services, education and training relating to insurance and legal services relating to insurance.

The Application was opposed by Legal & General Group Plc ("Opponent") on the basis of two of their trade marks for images of umbrellas (set out below) covering class 35 for advertising services and class 45 for insurance services.

Legal & General are a large insurance and investment service provider in the UK having been established nearly 200 years ago.  It is also listed on the London Stock market. The umbrella is a key element of their branding but is featured with their main brand underneath.

Section 5(2)(b) of the Trade Marks Act 1994 ("TMA 1994") – confusing similarity

The hearing officer firstly considered s.5(2)(b) of the TMA 1994 to determine if a likelihood of confusion existed and found:

• Identity between some of the services covered by the marks in classes 36 and 41 and some of the services covered by classes 35 and 45.  A medium degree of similarity was established between the remaining services as they were found to have the same users and trade channels, but were distinguished based on the intended purpose of the service. The Opponent's services intend to protect a consumer against particular events occurring whereas the Applicant's services enable the consumer to compare a range of insurance services.

• The average consumer purchasing or comparing insurance services was deemed to pay a higher than medium degree of attention. A higher degree of attention was found for any services aimed at professionals and businesses.

• The Opponent's umbrella trade marks were found to have a medium degree of inherent distinctiveness. The hearing officer commented that an umbrella is a simple representation and is understood as a metaphor for protection, aligning with the purpose of the mark for insurance and therefore reducing the inherent distinctiveness. However, inherent distinctiveness in relation to insurance was enhanced by the Opponent's use of the trade mark and the longstanding association between its services and the umbrella.

Comparison of the marks:

Based on the above, the hearing officer decided that, given the high degree of distinctive character of the earlier mark, and imperfect recollection, the average consumer would mistake one umbrella for the other even though it was accepted that the average consumer would pay a medium to high degree of attention.  The added phrase "GOT YOU COVERED" to the Applicant's mark did not suffice to distinguish the marks as consumers would likely see the words as a slogan rather than a signifier of the origin, creating indirect confusion. Therefore, the opposition under s.5(2)(b) succeeded.

Although the opposition succeeded under s.5(2)(b), the hearing officer still considered the alternative grounds for the sake of completeness.

Section 5(3)  – reputation/unfair advantage

Opposition under s.5(3) can be established where there is an earlier identical or similar trade mark with a reputation such that the use of the later trade mark would take unfair advantage or be detrimental to the distinctive character or repute of the earlier mark.

As the hearing officer had already concluded a significant part of the public would be aware of the earlier mark for insurance services and a likelihood of confusion, it follows that a link between the marks would arise in the mind of the public. Therefore, the opposition also succeeded under this ground.

Section 5(4)(a) – passing off

An application will be prevented from registration where any rule of law protects an unregistered trade mark or other sign used in trade which has rights acquired prior to the date of application or priority claimed. The hearing officer found that given that likelihood of confusion had already been found, the test for passing off would also be met and therefore the opposition also succeeded under this ground.

Charlene Nelson, Chartered Trade Mark Attorney, said: "This case demonstrates the potential significance of a finding on high conceptual similarity in the assessment of likelihood of confusion, particularly when the mark has acquired enhanced distinctiveness through use."