15th January 2024

Written by Sophie Anim

Sophie Anim, an associate in our Brand Protection team, summarises a recent decision by the UK Trade Mark Registry dealing with the factors that are important in trade mark opposition proceedings. This piece was originally written for, and published by, the Chartered Institute of Trade Mark Attorneys (CITMA) which you can access in the closing paragraph below.

Key points

When considering the overall impression of competing marks, any word element is of greater significance than respective figurative or background elements.

Evidence submitted in opposition proceedings should be fully substantiated and sufficiently tailored to the arguments being raised.

Section 5(2)(b) will be analysed in detail by the Registrar in opposition proceedings, where applicable

The detail

On 27th January 2022, easyGroup Ltd (the Applicant) applied to register the mark shown above and the application was published for opposition purposes on 15th April 2022. The Applicant sought to register the mark for goods and services in classes 35 and 39.

LKQ CZ s.r.o (the Opponent) filed a partial opposition against the Applicant’s mark on 15th July 2022, which was predicated upon s5(2)(b) of the Trade Marks Act 1994 (TMA). The partial opposition was specifically directed against “retail services and online retail services relating to pedal bicycles, electric bicycles, […] electric scooters, and parts, components, accessories therefor” in class 35 of the Applicant’s mark. The Opponent relied on its earlier mark (also shown above) to advance the opposition and all of the goods and services for which it was registered on 24th January 2020. These were: class 11, “Lighting apparatus for electric bicycles”; class 12, “Electric bicycles, parts, components, accessories and spare parts thereof included in this class”; class 35, “Intermediary services in the field of business, import-export, wholesale trade and specialized retail trade relating to electric bicycles, parts, components, accessories and spare parts”; and class 37, “Electric bicycle repair, including guarantee repairs”.

The Opponent contended that there was a likelihood of confusion between the signs and advanced arguments of conceptual and phonetic identity in its notice of opposition. It also argued that EASYBIKE is the most dominant component of the competing marks and the fact the signs contain different colours is very much ancillary when considering any similarity arguments. In terms of goods and services, the Opponent maintained that the services were identical and its goods were similar to the contested services.

The Applicant filed a counterstatement in which it refuted any likelihood of confusion and denied that the competing goods and services were identical or similar. It also filed evidence with its key purposes, including demonstrating the Applicant’s portfolio of marks and any difference in the goods in class 35.

Detailed analysis

The Registrar cited s60A TMA, therefore highlighting that goods and services that appear in the same class under the Nice Classification should not be assumed to be similar to each other. After detailed analysis, it was ultimately decided that the Applicant’s services were identical or similar to the services of the earlier mark, between a high and medium degree.

The Registrar flagged that it is necessary to interrogate who the average consumer of the parties’ goods and services is and the way in which they purchase the same. The Registrar found that the average consumer in this instance would consist of both professional/business users and the general public owing to the nature of the applicable services. In the premises, it was decided that the average consumer would pay at least a medium level of attention during the purchase process.

Distinctive character

The Registrar emphasised the importance of considering the earlier mark’s degree of distinctiveness: the more distinctive the earlier mark, the more chance there may be of likelihood of confusion. The Registrar found that the earlier mark has distinctive character and considered that the word element of the same is more distinctive in nature than its figurative counterpart.

While the Opponent did not file any evidence of use, the Applicant provided evidence that included examples of other companies’ use of the word EASY and BIKE on their websites. However, the Hearing Officer criticised the evidence for not including an explanation of the significance of the websites in the witness statement and submissions. The Registrar warned that even if the register includes many trade marks that contain the words EASY and BIKE in relation to the applicable goods and services, that will not prove sufficient in establishing that frequent use of those elements has diminished the distinctive character of the same.1 Similarly, the existence of earlier marks containing the elements EASY and BIKE will not have an impact on whether there is a likelihood of confusion between the Applicant’s mark and the earlier mark.

Comparison of marks

In comparing the marks, the Registrar found that:

• The word elements of the competing marks are of more significance when considering the respective marks’ overall impression.
• The parties’ marks are visually similar at a level between low and medium.
• The competing marks are aurally and conceptually identical.

Likelihood of confusion

Ultimately, the Registrar found that there was a likelihood of direct confusion between the competing marks. In reaching this conclusion, there was interesting consideration of the following argument submitted by the Applicant: that the Applicant’s “‘house’ style used by the easy family of brands, which includes easyJet” is recognisable to consumers, which means that in this instance they would be able to discern that the Applicant’s mark denotes the economic undertaking of the Applicant specifically, not the Opponent. The Registrar noted that an argument regarding likelihood of confusion that is based upon an alleged family of marks “is not typically invoked by an applicant, in argument against a likelihood of confusion, in order to justify an expansion of its portfolio of trade marks”. Unfortunately, the Applicant’s evidence did not ultimately serve to strengthen its case. For instance, some of the evidence submitted was not clearly related to the relevant consumer territory of the UK and certain articles included were not contemporaneous or recently dated.

Important takeaways

It is vital that any evidence submitted in relation to opposition proceedings is robust in nature (eg related to the applicable consumer territory and, where relying upon press articles, of the most relevant date period). This is particularly important in light of the fact the Registrar will run through s5(2)(b) of the Act very diligently, leaving no stone unturned.

1 T-400/06, Zero Industry Srl v OHIM, paragraph 70

This article was first published in the January/February 2024 issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk. You can read the article in full on their website here – where you can also view an image of the contested trade mark. Find out more about our intellectual property experience here.