The STEPS needed to properly plead a case: the critical role of evidence in trade mark oppositions

In the case of STEP, the UK Intellectual Property Office ("UKIPO") decision demonstrates the ability to file oppositions based on absolute grounds alongside those based on, the more commonly seen, relative grounds based on earlier rights held by the opponent.

In addition, this case highlights the importance of filing evidence that is relevant and sufficient in establishing reputation, enhanced distinctive character and goodwill. Additionally, it serves as a reminder that poorly pleaded cases, such as those where the opponent neglects to claim damages, are likely to falter.

Background

On 4 March 2022, Walkwithstep Ltd ("Walkwithstep") applied to register the trade mark "STEP" (the "Application") in the UK for goods in class 9. Gunther Markti ("GM") opposed the application in full relying upon the earlier UK trade mark registration to the logo set out below (the "Earlier Mark") covering classes 9, 41, 42.

GM's opposition was based on the following grounds:

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

GM relied upon their Earlier Mark covering classes 9, 41 and 42 claiming there was a likelihood of confusion on the basis that their Earlier Mark is visually and aurally highly similar to the Application and that the respective goods and services are identical or similar.

Section 5(3) of the TMA 1994

GM claimed the Earlier Mark enjoys a significant reputation in the UK for the goods and services covered in classes 9 and 41, and as such, consumers are likely to confuse or associate the goods of the Application with that of the Earlier Mark.

Section 5(4)(a) of the TMA 1994

GM relied on the unregistered sign 'STEPS APP', which they claimed to have used in the UK since 2015 for the goods and services covered in classes 9, 41 and 42. GM claimed use of the mark would be contrary to the law of passing off.

Section 3(1)(b) and (c) of the TMA 1994

In addition to the relative grounds for opposition set out above, GM also claimed that the Application, being the word 'STEP', is devoid of distinctive character and descriptive of all the goods covered by the Application.

Decision

Section 5(2)(b) of the Trade Marks Act 1994

The hearing officer considered the marks to be visually and aurally similar to a medium degree and, due to the shared concept of 'step/s', conceptually similar to a high degree. All of the Application's goods fell within the scope of the earlier mark's goods and so they were, therefore, identical however the hearing officer found there to be no likelihood of indirect or direct confusion as the differences between the marks were sufficient enough for the consumer not to confuse the two.

Section 5(2)(b) ground of opposition therefore failed.

Section 5(3) of the Trade Marks Act 1994

The hearing officer commented that GM's pleaded case lacked any claims of damage and as a result, the claim under this ground could not succeed. GM were criticised by the hearing officer for submitting evidence that was insufficient to establish whether the earlier mark had a reputation or enhanced distinctive character.  The hearing officer stated that even if they were satisfied the Earlier Mark had a reputation and there was a link between the marks, as GM failed to claim damage, the claim under this ground cannot succeed.

Section 5(3) ground of opposition was therefore dismissed.

Section 5(4)(a) of the Trade Marks Act 1994

The hearing officer was not satisfied that GM demonstrated a protectable goodwill in 'STEPS APP' in relation to the goods and services relied upon. The evidence only demonstrated the number of downloads of the 'STEPS APP' application (2.01 million in the UK between 2015 and 2023) and a revenue of US$578,451 in the same period. No evidence was provided of advertising, marketing spend or market share and the evidence was deemed to be insufficient for a finding of goodwill.

GM relied upon 'STEPS APP' in word-only format under this ground and the hearing officer found that the words alone are not capable of performing the essential function of a trade mark. As such, if a mark cannot be used as a trade mark, it cannot possibly have accrued goodwill as a trade mark.

Section 5(4)(a) ground of opposition was therefore dismissed.

Section 3(1)(b) and (c) of the TMA 1994

Section 3(1)(c)

This ground provides that a trade mark should not be registered if the trade mark consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services, or other characteristics of goods and services.

GM claimed 'STEP' is descriptive of computer software applied to walking, on the basis that the word "step" has two relevant meanings: (i) a series of actions a programme does in regard to computing; and (ii) the act of lifting your foot and putting it down in order to walk.

The hearing officer considered the definition of 'step' would be understood by the vast majority of people in the UK and was satisfied that only the word 'step' can be used to describe the movement involved in walking. Therefore, the hearing officer considered it was reasonable to believe they the relevant persons would see 'steps' as a description of the purpose of the applicant's goods i.e. software that tracks and monitors the user's steps.

Section 3(1)(c) in relation to all the goods of the Application was therefore upheld.

Section 3(1)(b)

This ground provides that a trade mark should not be registered if the trade mark is devoid of any distinctive character.

GM made no independent claims as to why the mark is non-distinctive other than because it is claimed to be descriptive. Insofar as the Application is objectionable because it is descriptive of the goods in the application, it is also objectionable because it is non-distinctive for the same goods.

Section 3(1)(b) in relation to all the goods of the Application was therefore upheld.

Conclusion

The opposition failed under sections 5(2)(b), 5(3) and 5(4)(a) however, the opposition succeeded under sections 3(1)(b) and (c) and the Application was refused in its entirety.

Our thoughts

Charlene Nelson, Managing Associate (Chartered Trade Mark Attorney) said: "The decision of this case shows that oppositions based on absolute grounds can be relied upon as well as oppositions based on relative grounds. In this case, despite the opponent's failure to show reputation, enhanced distinctive character and goodwill for its earlier mark, the application was still refused in its entirety."