GEEKCORE v GEEK STORE – Relying on unregistered trade mark rights
Wilson Gunn client AP & Co Limited has won its opposition case against Yellow Bulldog Limited.
Earlier this month, DC Comics (DC), the American comic book publisher, filed an opposition to Rihanna’s US trade mark application for ROBYN.
Rihanna herself is no stranger when it comes to protecting her intellectual property rights with a recent decision at the Court of Appeal (UK) on Topshop’s use of her image on t-shirts being in her favour. For more on this case see: Rihanna wins Court of Appeal Trade Mark case
In the grounds for opposition, DC bases its claims on two grounds relying on its two US trade mark registrations for ROBIN.
DC argues that registration of ROBYN would likely confuse or deceive the public that the goods offered under ROBYN come from or are connected to ROBIN. This is based on DC’s observation that the conflicting marks are “virtually identical” and the services applied providing online non-downloadable general feature magazines are similiar to the goods registered for ROBIN, which covers comic books.
DC’s second argument relies on the claim that the ROBIN marks have a famous reputation for the related goods and services and that registration of ROBYN would damage the goodwill associated with its marks as well as dilute the marks’ distinctiveness.
There may be a possibility for coexistence of the marks but this will depend on whether the parties can come to an agreement usually involving amendment of the goods/services specification in the opposed application.
To avoid running into this type of situation above, we always recommend conducting a trade mark clearance search in territories of interest prior to using or applying to register a new trade mark. If you are considering obtaining protection for your trade mark or would like a comprehensive search carried out for potential trade marks of interest, please contact us and one of our Trade Mark Attorneys will be able to discuss this with you.