A recent appeal from the UK Trade Marks Registry to the High Court has emphasised the need for trade mark owners to file evidence correctly, particularly when seeking to establish a reputation in a mark.1

E! Entertainment Television Inc applied to register the mark E! ONLINE in relation to a broad range of goods and services in the field of telecommunications. Deutsche Telekom opposed the application relying on its earlier UK marks and CTMs in respect of T-ONLINE in the same field.

The Court held that the Hearing Officer had not erred in applying the well established law of the European Court of Justice regarding the comparison of trade marks for the purposes of assessing similarity2. The Hearing Officer had found the only stylised element of the T-ONLINE marks to be five small squares bisecting the mark, which he regarded as making very little difference to its overall distinctive character. He also held that there was nothing to suggest that the ‘T’ element of the mark was distinctive in its own right and that, therefore, the mark relied on by Deutsche Telekom was "a combination of two elements that are individually devoid of distinctive character". His finding that the word ‘online’ has very little distinctive character in the eyes of the average consumer was also considered to be correct. On the balance of probability the Hearing Officer rightly concluded that there was no likelihood of confusion between the marks E! ONLINE and T-ONLINE.

Most importantly, Deutsche Telekom had tried to argue that the T-ONLINE mark enjoyed a reputation within the UK sufficient to be protected under section 5(3) Trade Marks Act 1994, which gives holders of trade marks with a reputation additional protection where use of a third party’s mark takes unfair advantage of or is detrimental to the earlier mark. However, the company had failed to prove such a reputation from the evidence it had submitted. Much of the evidence was dated after 1997, the year of filing of the E! ONLINE application, and could not therefore be taken into account. What evidence pre-dated 1997 did not show use of the T-ONLINE mark within the UK, nor did it show a reputation in the mark within the UK, nor any means by which use of the mark elsewhere (e.g. in Germany, where the mark was predominantly used) could have contributed towards a reputation within the UK.

The Court was of the opinion that Deutsche Telekom’s evidence at best proved a reputation in the company itself, not the mark T-ONLINE. The judge went so far as to say that it would have been relatively easy for Deutsche Telekom to establish a reputation in the mark, for example by giving evidence of the precise number of consumers within the UK who had subscribed to the T-ONLINE service up to 1997. Although the T-ONLINE service was only available in German, the judge held that evidence could have been adduced of German residents who would have used the service when visiting the UK. No such evidence was provided, despite – presumably – its availability to Deutsche Telekom. The omission of such evidence was, in the judge’s words "significant".

The case highlights the importance of adducing the correct type of evidence in proceedings before the Registrar, particularly when claiming a reputation in a particular trade mark. An analogy would be the Coca-Cola company attempting to assert a reputation in the mark MELLO YELLO (a citrus soft drink not particularly well known within the UK) by providing evidence of the company’s vast reputation per se. Large companies such as Deutsche Telekom (which are presumed to have the resources to corroborate claims of a reputation in a particular mark) should not rely on their own renown and assume that a similar reputation in their marks will be immediately inferred as a result. More precise evidence directed to the mark in question is essential.

Footnotes

1. Deutsche Telekom AG v E! Entertainment Television Inc [2006] EWHC 33 (Ch)

2 (i.e. cases such as Sabel BV v Puma AG, Lloyd Schuhfabrik etc.)

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