Senior Associate (Chartered Trade Mark Attorney)
Intellectual Property | National Charity Legal Services
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In a surprising decision by the UK Intellectual Property Office, the trade mark application for "Cheap Dream" covering clothing was not found to be confusingly similar to "DREAMS" for the same goods.
This case highlights the importance of submitting evidence of reputation as it is likely to make a big difference in finding a likelihood of confusion due to the trade mark enjoying broader rights.
One of the factors considered by the UK IPO when deciding if two trade marks are confusingly similar is the distinctiveness of the earlier right, which can be inherently distinctive by virtue of the mark not having any meaning in relation to the relevant goods or services, or distinctive through use because the mark enjoys a reputation in the UK.
Robert Walker ("Applicant") applied to register the trade mark, Cheap Dream, in class 25 for clothing, footwear and headgear ("Application"). The Application was opposed by KTS Group Limited ("Opponent") based on section 5(2)(b) of the Trade Marks Act 1994 and its trade mark registration for DREAMS in class 25 for articles of clothing, swimwear, footwear and headgear ("Earlier Mark").
An opposition under s.5(2)(b) will succeed where there is an earlier identical or similar trade mark covering identical or similar goods and services and a likelihood of direct or indirect confusion exists. The likelihood of confusion is considered globally, taking into consideration various factors including the identity and similarity of the marks and goods/services and the distinctiveness of the earlier mark.
The hearing officer found the following:
Whilst this seems a surprising result, it does highlight the importance of filing evidence of use to support the ground of opposition where possible. In this case, it is unclear if any such evidence was available, but it should have been included if it was available.
Charlene Nelson, Chartered Trade Mark Attorney, commented: "This case highlights that it is best to file evidence to demonstrate an enhanced distinctiveness/reputation through use and I wonder if such evidence were submitted (if available), would the same conclusion have been reached. I doubt it."