Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
Telecoms company Sky would appear to have come away mostly unscathed from an opposition that industry rival TalkTalk had filed against a trademark application for ‘TALK SHIELD’, in respect of goods and services classes 9, 35, 38, 41 and 42.
The main points considered by the tribunal were TalkTalk’s claims in relation to sections 3(1)(c) and 5(2)(b) of the Trade Marks Act 1994.
First, the hearing officer considered TalkTalk’s objection that Sky’s “TALK SHIELD” mark offended section 3(1)(c), namely that it was descriptive of the goods and services of classes 9, 38 and 41, including call screening, barring and blocking software, nuisance call blocking solutions and telecommunications services.
TalkTalk partially relied on their evidence that the dictionary definitions for the words “talk” and “shield”. The hearing officer considered that it is trite law that a trademark must be considered as a whole. Following on from this, the hearing officer decided that Sky’s “TALK SHIELD” mark created a “distinctive impression” which was indeed more than the sum of its parts. Additionally, the hearing officer considered that the mark was “no more than allusive of the goods and services”, and therefore ruled that the ground of opposition under section 3(1)(c) failed.
Second, the hearing officer considered TalkTalk’s objection that Sky’s mark offended section 5(2)(b), namely that there was a likelihood of confusion due to a high degree of similarity between the parties’ marks in relation to identical or highly similar goods.
The objection was considered for two groups of TalkTalk’s marks;
1) Their “TalkTalk”/“talktalk” marks
2) Their composite marks, which consisted of two marks comprising the text “TalkSafe” below a shield device containing one of two telephone designs. These marks were only relied upon for opposing the class 38 services.
The “TalkTalk” and “talktalk” marks were judged to have a low to medium level of visual and aural similarity, and a very low, if any, conceptual similarity to Sky’s mark. The hearing officer concluded that there was no likelihood of confusion for these marks, even assuming identical goods and services.
Moving onto TalkTalk’s composite “TalkSafe” marks, these were found to have a high degree of conceptual similarity to Sky’s mark, owing to the conceptual similarities between the word “Safe” and the shield design in the TalkTalk marks. The hearing officer therefore decided that this would “cause the average consumer to assume that the marks emanate[d] from parties who are the same or economically linked” and so ruled that the opposition under section 5(2)(b) succeeded in relation to the class 38 services.
The opposition only succeeded in respect of the class 38 services and Sky successfully defended its right to continue its “TALK SHIELD” trademark application in respect of the goods and services in classes 9, 35, 41 and 42 which, as evidenced by the long list of goods and services appended to the decision, might be seen as quite a favourable result for Sky. However, TalkTalk are likely to take some comfort from the outcome as it has removed the services in class 38 for telecommunications, which would appear to be the core services for both parties in this dispute.
This decision highlights the importance of considering a mark in its entirety when determining distinctiveness. In this case TALK and SHIELD may be deemed descriptive but when used together the mark becomes at most only allusive and therefore sufficiently distinctive for registration purposes. Furthermore, the broad specifications of goods and services in Sky’s application have enabled Sky to retain protection for a wide range of goods and services. But the loss of the class 38 services would, on the face of it, appear to be a critical loss for Sky.
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