Summary
World Champion Imprint Club Limited (WCIC)’s applications containing three swirls representing a stylised football accompanying the words WORLD FOOTBALL AWARD and WORLD FOOTBALL LIFETIME ACHIEVEMENT AWARD have been refused registration in the UK. In doing so, the UKHO concluded that the swirl elements would cause consumers to wrongly believe that WCIC’s football awards and associated goods and services were co-branded with or sponsored by Asics, would take unfair advantage of Asics’ reputation, and would also amount to passing off.
Interestingly, this can be contrasted with the parallel decision issued by the EUIPO, which held that the signs were not sufficiently similar so as to cause confusion or take advantage of Asics’ reputation in its swirl logo.
Background
WCIC filed applications to register two marks which contained three swirls representing a stylised football. Asics opposed the applications, claiming they were confusingly similar and would take unfair advantage of the reputation acquired in its swirl logo, broadly covering bags in Class 18, apparel in Class 25, and sporting equipment in Class 28. It also opposed the applications claiming passing off of its unregistered rights.
Likelihood of Confusion
Asics filed substantial evidence of its use of the mark both as a standalone mark and in conjunction with the brand name Asics. In its determination of an appropriate and fair specification for the purposes of the opposition, the UKIPO found the evidence of use submitted only afforded Asics actionable rights in a subcategory of the broad terms (e.g. clothing and footwear) it had registered, as it had only demonstrated use in relation to certain goods.
Despite this limitation, the UKIPO found that WCIC’s more generalised goods for bags and apparel in Classes 18 and 25 and sporting goods in Class 28 were sufficiently similar to Asics’ registered rights. Umbrellas, business administration, and the entirety of the applied-for Class 41 services were deemed dissimilar.
The UKIPO found that the verbal elements of WCIC’s marks and the orientation of the three swirls reduced reduce the degree of similarity to a low level overall. However, despite acknowledging that it would be wrong to artificially dissect WCIC’s marks, the IPO did go on to compare Asics’ swirl logo and the swirl(s) employed in the device element of WCIC’s marks as standalone elements, finding the device elements to be visually and conceptually similar to a fairly high to medium degree.
Although the overall differences between the marks were deemed sufficient to avoid consumers directly confusing them, the UKIPO found there to be a likelihood of indirect confusion on the basis that consumers would recognise the individual swirls present in WCIC’s marks as Asics’ swirl logo and perceive the mark as indicating that the football awards were co-branded or sponsored by Asics. This finding was coloured by the evidence submitted by Asics pertaining to its reputation and enhanced distinctive character in its swirl logo, including sponsorship activities.
Detriment to Reputation / Unfair Advantage
Asics filed substantial evidence to support its claim to a reputation in the swirl logo (both in isolation and in conjunction with the brand name ASICS), which was accepted by the UKIPO in light of: its length of use (since 1993); the intensity of its use (evidenced by turnover); Asics’ marketing efforts; and brand recognition, as evidenced by a YouGov survey.
As a result, the UKIPO was satisfied that WCIC’s marks would bring to mind Asics’ swirl logo because of the similarities between the figurative elements, even where dissimilar goods were involved. The UKIPO therefore upheld Asics’ claim of unfair advantage against the applications in their entirety, finding that WCIC’s use of the applied-for marks would likely result in it benefiting from the power of attraction and prestige acquired in Asics’ swirl logo, unfairly exploiting its marketing efforts.
Passing Off
Asics’ opposition on the grounds of passing off was also successful, with the public likely be deceived into believing that Asics had approved or endorsed WCIC’s goods and services.
Related EUIPO decision
Conversely, the EUIPO rejected Asics’ equivalent opposition, finding the signs dissimilar in all respects and making Asics’ evidence of reputation and enhanced distinctive character irrelevant.
Key takeaways
- The question of indirect confusion is nuanced and it is relatively rare to receive a finding of indirect confusion at registry level. Asics’ evidence clearly influenced the UKIPO’s assessment of the mark in this regard. However, the risk of indirect confusion should not be overlooked when clearing new brands and consideration should be given to the nature of the market in question.
- It is also rare for the UKIPO and the EUIPO to reach different conclusions in proceedings based largely on the same facts. In this instance the EUIPO’s determination of the degree of similarity ultimately rendered Asics’ evidence of its enhanced reputation in its swirl logo irrelevant.
You can read the full UK decision here.
This article was written by Amy Salter and Tedi Halili.
If you require assistance in relation to registering or challenging a trade mark or other form of IP, or would like any further information, please contact Amy Salter (Senior Trade Mark Attorney) or Emily Roberts (Partner).
Subscribe to our Concept newsletter and receive the latest intellectual property legal updates, news and event invitations direct.