Opposition to Application Number 2410492

For the registration of The trade mark Beko sport

Timeline
7th January 2006

Socks World International apply to register Beko sport. Under class 25 for clothing, footwear and headgear.
Application details are captured. The mark undergoes examination Published in the Trade Mark Journal

11th January 2006 24th February 2006 24th March 2006 27th June 2006 18TH May 2009 25th Sept 2010

Opposition case no. 94441 from Beko Plc received

Beko Plc loses its case and decides to appeal. Beko Plc wins its case at appeal on grounds of unfair advantage s5(3)(a) TM Act 1994

Grounds for opposition

The Hearing Officer took the wrong approach to TM Act1994 s5(3) - the new mark would blur the earlier mark and gain an unfair advantage from its existing reputation and sports sponsorship. The Hearing Officer was too narrow in his application of the law relating to bad faith in s3(6) the new mark was intended to profit from the earlier marks reputation and sports sponsorship. The decision was made before the LOreal v Bellure case in the ECJ For the H.O. Decision to be overturned there must be a distinct and material error of principle in the decision Reef Trade Mark [2003] RPC 5 or he must be clealy wrong.

Case for the opposition

Beko is part of a large Turkish conglomerate manufacturing white goods . It owns trade mark registrations 1457464 and 1457465. Beko was first used as a trade mark in 1991. In Mar 2007 Beko claimed 17% of the UK refrigerator market Total sales from 2000 2006 of Beko products total 780 million The opponent has a reputation in the mark BEKO in respect of a wide range of household goods. To promote its mark the opponent has sponsored such teams as Millwall F.C. Where the mark BEKO has been prominently displayed on sports clothing. Registration of the mark applied for would take advantage of this reputation and would be detrimental to the ability of the earlier mark to be used in sponsorship. The applicant must have been aware of this reputation and has proceeded to take advantage in bad faith by filing the subject application.

Case for the defence

The font used is the commercially available Changeling Bold. Adoption of a similar font to the Opponent for use in connection with goods in a class of goods of no commercial interest to the Opponent cannot be considered to be an act of bad faith, as the Opponent has not demonstrated that the Applicant has acted fraudulently or dishonestly, or intends to or has traded off his reputation and sponsorship of sport, or that it has suffered or will suffer disadvantage or detriment. It is concluded that the font adopted in the Application for the word BEKO is not identical [to] that used by Beko plc. The Opponent has failed to demonstrate that such use takes unfair advantage of, and is detrimental to the distinctive character and favourable reputation of the Beko plc companys trade marks. It might even be argued that this use provides the Opponent with further free advertising of its trade marks.

Relevant case law

In LOreal v Bellure [2010] EWCA 753 Jacob LJ para 91 An advantage obtained by the third party from the use of a similar sign, which is neither confusing nor otherwise damaging, is unfair if the advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the mark and to exploit the marketing effort expended by the proprietor of the mark without making any such efforts of his own, and without compensation for any loss caused to the proprietor, for the benefit gained by third parties. In Whirlpool v Kenwood [2009] EWCA 753 There must be an added factor of some kind for that advantage to be categorised as unfair. It may be that in a case in which advantage can be proved, the unfairness of that advantage can be demonstrated by something other than intention, which was what was shown in LOreal v Bellure. In LOreal v Bellure ECJ Case C-487/07 Free-riding relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers in particular cases where there is clear exploitation on the coat-tails of the mark with a reputation.

Bad Faith s3(6)

The H.O. noted that there was no acceptable definition for bad faith provided by previous case law. In Chocoladenfabriken Lindt & Sprungli AG v Franz Hauswirth GmbH C-529/07 he noted that knowledge of an opponents mark whilst important was not in itself sufficient to determine bad faith. In Visa BL 0-340-99 it was held that a finding for bad faith was unlikely to succeed where it had already failed under s5(3) or s5(4). There was no evidence to show that Socks World , although it clearly knew of the earlier mark, intended to stop Beko from using it on clothing for sponsored events or to try and take money from Beko.

Establishing a Link
Applying case law principles from: Adidas-Salomon AG v Fitnessworld Trading Ltd C-408/01 ECJ 23/10/03 Intel Corp Inc v CPM UK Ltd C-252/07 ECJ 26/06/08 The H.O. looked at the nature of the goods, the distinctive character of the mark and the existence of a likelihood of confusion knowing that a link is to be appreciated globally taking into account all the relevant factors SABEL BV v Puma AG [1997] ECR I-6191. He concluded that the marks were very similar and that Bekos mark will be brought to mind when Socks Worlds mark is encountered. A link was established.

Appeal Decision

There was no appeal on grounds of detriment to the earlier mark. The appeal on grounds of unfair advantage s5(3) was allowed. The H.O. had failed to consider the existing reputation of the mark outside of sport. Socks World was riding on Bekos coat tails and benefiting from its power of attraction, reputation, prestige, marketing and branding. Socks World International ordered to pay Beko 2000.

Conclusion

Jacob LJ interpreted the ECJ decision in LOreal v Bellure to mean that any advantage gained by riding on the coat tails of a mark necessarily implies it to be unfair. However the H.O. in this case would rather see other factors as being present for unfairness to be determined.