Ebay, one of the popular e-commerce platforms, opposed the registration of one 'UKBAY' at the UK Intellectual Property Office. Ebay claimed that its mark was popular worldwide. It further claimed that the similarity between Ebay and UKBAY is likely to cause confusion amongst their common consumer-base and hence, the latter must not be registered. Ebay also stated that since the word "BAY" was common in the marks, consumers are likely to create an association between the two marks and that UKBAY would draw undue benefit from such association.

UKBAY was published in April 2017 for the following services in Classes 35 & 38:

Class 35: Advertising; business management; business administration; office functions

Class 38: Telecommunications

The UK IPO reviewed the matter in great detail by inspecting the mark UKBAY on the touchstone of certain interesting parameters:

It resolved to assess the contending marks by measuring the degree of similarity from the limited attention span of any average consumer. It noted that such average consumer is likely to pursue the mark as a whole and not analyse the details thereof.

It observed that there was a high degree of similarity and likelihood and that the consumers would create an association between the two marks. However, the UK IPO also noted that such degree of similarity and association was not enough to create confusion in the minds of the consumers. One of the rationales behind this observation was said to be the differences in the services that were provided by both the parties.

The UK IPO stated that there was lack of evidence, such as, change in the economic behaviour of the opponent's customers or any such possibility thereof. The only part of the IPO's decision which was in favour of Ebay was that it allowed removal of "Advertising Services" from UKBAY's application in Class 35. Since there was no likelihood of confusion owing to the dissimilar services, the UK IPO rejected Ebay's other contentions and awarded costs to the tune of USD 560 in favour of UKBAY.

Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

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