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29 November 2017

Big Brand owners protect their Trade Marks

There has been a spate of recent cases where well-known brands have taken action to protect their trade marks in a variety of different contexts.

Wembley Stadium attacks Wembley Football Club’s EU Registration

Nearly five years after Wembley FC, a semi-professional football club based in Wembley which has been in existence since 1946, applied for and obtained an EU registration for its club crest (see below), Wembley Stadium successfully (at least in the first instance) applied to cancel this registration.

(EU IPO, 2012)

The decision focused on Wembley Stadium’s earlier EU registration for WEMBLEY STADIUM and the claim that there would be consumer confusion between WEMBLEY STADIUM and Wembley FC’s crest particularly because of the reputation (acquired through extensive use) in the mark WEMBLEY STADIUM. The EU Intellectual Property Office (EUIPO) concluded that the possibility of consumer confusion did exist between these two marks because both marks were identical “in their initial and distinctive verbal element WEMBLEY”.  The impact of Wembley being the name of geographical location in the UK was referred to but does not appear to have had an impact on the assessment of consumer confusion. The EU office has to consider the matter from the perspective of the population in all EU member states and it may be that a significant part of the EU public would unaware of this geographical significance and associate “Wembley” purely with Wembley Stadium.  The geographical meaning of Wembley may well have been given more significance in the UK particularly in the context of a football club that had been operating in the locality of Wembley since 1946. In any event Wembley FC, which did not originally defend its registration, has now appointed a professional representative and appealed this decision. We await the appeal results with interest but an important take-away message for trade mark owners is to make sure they subscribe to a trade mark watching service so that they can take action against any conflicting applications before they proceed to registration (as was the case here).

Give a dog a bad name –  ZUMA restaurant successfully stops use of ZUMA for dog food

In contrast to the Wembley case, which concerned goods/services identical or similar to those of the registered trade mark/s, this case illustrates how, in some circumstances, trade mark owners can prevent use by others of identical or similar marks in a very different commercial sphere.

ZUMA is a contemporary Japanese restaurant with outlets in London (and elsewhere).  The ZUMA name is protected by UK and EU trade mark registrations covering, broadly speaking, restaurant services.  The London ZUMA restaurant opened in 2002. It has acquired a reputation as a high-end, superior dining establishment which is popular with celebrities. ZUMA restaurant took legal action against a business which was planning to use ZUMA, DINE IN WITH ZUMA and the below logo to sell pet foods via the website dineinwithzuma.com.

 (Azumi, 2017)

Pet foods are not similar to restaurant services.  Because of this, ZUMA restaurant, instead of having to prove that Zuma Pet Food’s use would cause actual consumer confusion, had to show that when consumers encountered Zuma Pet Food, they would make an unpleasant “link” or association with ZUMA restaurant.   ZUMA restaurant succeeded in these claims as it was accepted that there was an “inherent tension between dog food and human food” particularly “food served to humans in a high quality restaurant such as Zuma”.  In view of this, the association made by consumers between Zuma Pet Food and ZUMA restaurant was damaging to ZUMA restaurant’s reputation in its trade marks.  This case is a good example of the extended protection offered to marks which have a reputation – provided of course this reputation can be proved in evidence.

The claim by Zuma Pet Foods that it should be allowed to use the ZUMA name because it was the name of the founder’s dog was given short shrift; the “own name” defence did not apply to animals.

BMW v Technosport London Limited (TLL)

There has long been a tension between Intellectual Property rights and spare parts/repair services particularly in the automotive industry.  Unauthorised car traders often want to use trade marks to inform consumers that they repair certain makes of car or stock genuine branded spare parts despite the fact that they are not part of a brand owner’s official dealership network .  Trade mark law specifically makes allowances for some “unauthorised” uses of trade marks where this use is purely for the purposes of identifying the goods or services as being those of the trade mark owner.  So, where a dealer uses another’s trade mark in a merely informative statement such as “we repair BMW cars” then the brand owner cannot complain about such use.  Where, however, the use of a trade mark(s) is misleading because it implies a commercial connection with the brand owner, then the brand owner can object.  The line between these two uses can be blurred and this latest case provides some further helpful guidance for both brand owners and third parties operating in this commercial space.

TLL specialises in repairing BMW cars but is not a BMW authorised dealer.   In the course of its business it used various BMW insignia including the logos &  (BMW, 2017), the Twitter handle “@TechnosportBMW” and the combination of BMW with TECHNOSPORT on t-shirts and on its vans (as illustrated below). It was decided at first instance that BMW could object to the use of both logos because, on seeing these logos in the context of TLL’s business, consumers would at least speculate whether TLL had a commercial relationship with BMW. The remaining uses were considered acceptable “informative” uses and not ones which BMW could therefore object to.  However, this was successfully overturned by BMW on appeal.  The appeal judge decided that these uses, i.e.  the Twitter handle “@TechnosportBMW” and the combination of BMW with TECHNOSPORT on t-shirts and vans, were not merely informative.  Instead they could convey the impression of an authorized, commercial connection between BMW and TLL particularly in the context of how authorised BMW dealers tend to style themselves, i.e. by reference to their name immediately followed by BMW. Accordingly such uses could be restrained by BMW.

References:

EU IPO database, 2012

Azumi Ltd v Zuma’s Choice Pet Products [2017] EWHC609

BMW v Technosport London Limited [2017] EWCA (iv 779)

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