TOTAL trade mark: opposition fails due to lack of specific evidence of use

A recent opposition decision by the UK Intellectual Property Office (UKIPO) highlights the importance of good quality evidence of use.¹  Petrochemical company Total SA's opposition to a visually similar device mark failed on all but one ground. According to the UKIPO, this was mainly due to weaknesses in its evidence. This was despite the UKIPO's acknowledgement that Total's UK subsidiary spent nearly £39 million on marketing and advertising between 2006 and 2014 and that its logo had been used extensively since its adoption in 2003. The case highlights the important role comprehensive and accurate evidence of use plays in an effective opposition.

IKON’s application

On May 1 2015 IKON Financial Group Limited applied to register a UK device mark containing red, blue and orange ribbon-shapes forming a rotating ball. Believing IKON’s mark to bear more than a passing resemblance to its own, Total opposed the application under Sections 5(2)(b), 5(3) and 5(4)(b) of the Trademarks Act 1994, claiming earlier rights in relation to an EU device mark, an earlier registered Community design right and copyright. The latter two oppositions failed and the former succeeded, but only in respect of one service for which IKON sought registration.

 Ikon's mark

Total's mark

Relative grounds for refusal

Section 5 of the Trademarks Act sets out the following grounds for refusal of registration:

• Section 5(1) – where the marks in dispute are identical as are the goods and services;
• Section 5(2)(a) or (b) – where either the marks in dispute are similar or identical, or the goods and services are similar or identical. In either case there must be a likelihood of confusion/association on the part of the public; and
• Section 5(3) – where the marks in dispute are similar or identical and the goods and services are dissimilar (or similar, according to case law), and the mark would take unfair advantage of the distinctive character or repute of the earlier mark.

Evidence of use

The UKIPO examiner found fault with Total’s evidence of use due to its lack of specificity. No turnover figures or invoices were provided, nor any indication of the scale of use of its mark in the United Kingdom with respect to certain goods and services. Various promotional materials adduced by Total which would have otherwise proved useful were, according to the examiner, either undermined due to being undated or irrelevant as they fell outside of the relevant period. As such, Total’s claim of genuine use for a number of goods and services was rejected and the opposition was able to proceed only in respect of those for which IKON had already conceded use.

When assessing Total’s Section 5(2)(b) opposition, the examiner unsurprisingly considered both marks to create a highly similar visual impression. However, he found any likelihood of confusion created by such similarity to be offset by the dissimilarity in all but one of their respective goods and services. The examiner considered IKON’s application for financial services to be identical given that it covered all of Total’s services in the Class 36 (“Fuel payment card services; loyalty card services for the purchase of gifts, trips and gasoline; issuing of cards for automatic refuelling in service stations”). However, he found that the marks would be utilised in different trade channels, have different intended purposes and would not be in competition. Notably, in arriving at this conclusion the examiner considered that Total’s evidence was not sufficient to allow proper assessment of the scale of use of Total’s mark within such goods and services in the United Kingdom.

In relation to the Section 5(3) opposition, the examiner was satisfied on the evidence that Total had sufficient reputation in Class 4 for fuel and lubrication products. However, while he considered Total’s reputation to be a factor in favour of establishing a link between both marks in the average consumer’s mind, he also considered the “great distance” between the goods and services (fuel and lubrication products versus financial services) such that a link could not exist. The examiner noted that, for the purposes of Section 5(3), while there is no requirement that a likelihood of confusion be established nor that the goods and services be similar, these factors should be taken into account in establishing a link. In doing so, the examiner may have adopted a different approach to the analysis previously undertaken by tribunals considering this section (and its equivalent in Article 5 of the Trademarks Directive).

Careful documentation

Total’s difficulties stress the importance of being able to adduce precise evidence of genuine use. Rights holders would be well advised to take proactive steps systematically to document use of their brands, including detailed evidence of advertising campaigns, marketing spend, any licensing, brand-protection activities and costs, together with brand management guidelines, always indicating relevant dates. Keeping such information on file could prove vital should a mark be challenged or it be necessary to prove prior rights against a third-party application.

Notes

1. O-448-16.