This article deals with recent trade mark matters involving famous sporting brands.
Taking it to the Max
There's a young whippersnapper who drives very fast, an uber-confident young man, called Max Verstappen. Max has taken over Formula One, a sport that was dominated by a certain Lewis.
Trade mark application
Like all sports stars, Max Verstappen knows that his fame has provided him with commercially exploitable intangible IP assets that he is very keen to protect. Somewhat predictably, Max wants to launch a clothing brand using the name MAX 1. In December 2021 Max filed a Benelux trade mark application for MAX 1 for clothing, as well as retail and entertainment services.
Trade mark opposition
Max's trade mark application unfortunately spun off track - the application was opposed by a veritable sporting giant, Nike, the owner of the trade mark NIKE AIR MAX that has been in use since 1987.
The Benelux Office for Intellectual Property (BOIP) upheld Nike's opposition. Here are some of its remarks and findings:
- Same goods: 'The goods of the contested sign are partially identical and partly similar to the goods of the (NIKE AIR MAX) trade mark.'
- A perceived sub-brand: 'Since it is common practice in the clothing sector for the same mark to be configured in different ways, the relevant public might also think that the contested sign (MAX 1) is a sub-mark of the opponent (Nike).'
- A likelihood of confusion: 'There is a likelihood of confusion in the sense that the public may believe that the goods covered by the trade marks invoked and those of the contested sign belong to the same undertaking or, as the case may be, from economically linked companies.'
No home town decision
Max will have been bitterly disappointed by the BOIP's decision. After all, Max is the home town boy, a resident of the 'NE' portion of the Benelux...the Netherlands.
Puma applied to register the trade mark PROCAT for footwear and headgear in Canada. The company Caterpillar opposed the registration of the trade mark on the basis of its trade mark registrations for CAT for the same goods. The Canadian IP Office dismissed the opposition.
The matter went on appeal and the Federal Court overruled the decision and ruled that the trade marks are similar and the goods are identical. As regards the term 'pro', the court said that it is commonly used to suggest high quality, and therefore did not distinguish the trade marks.
Iconix is the company behind the Umbro brand. It claimed that the DP Logo of the company Dream Pairs Europe was confusingly similar to the Umbro Logo and it sued in the UK for trade mark infringement, Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and Top Glory Trading Group Inc, 2023 EWHC 706CH. But Mr Justice Miles found that there was no confusion due to various considerations:
Minimal similarity: 'I have reached the overall assessment (applying the average consumer perspective) that there is at most a very low degree of similarity between the marks and the sign – it is very faint indeed.'
Savvy consumers: - 'The average consumer would know that there are many footwear manufacturers and that they deploy branding.'
No intention: The designer of the allegedly infringing shoe 'designed the DP logo at a time when he did not know Umbro and the Marks.'
Adidas, the owner of the famous Three-stripe Logo, filed an opposition to the registration of a US trade mark application for a yellow Three-stripe Logo (parallel stripes) for clothing, hats and bags filed by BLM Global Network Foundation.
Adidas alleged use going back to 1952, as well as 'international fame and tremendous public recognition' and confusion. It's court papers spoke of the fact that BLM's mark ' incorporates three stripes in a manner that is confusingly similar to the Three-Stripe mark in appearance and overall commercial impression.' Adidas claimed that consumers familiar with its brand will assume that goods bearing the latest trade mark 'originate from the same source, or that they are affiliated, connected, or associated with or sponsored by Adidas.'
Adidas suddenly announced its intention to 'withdraw its opposition to the Black Lives Matter Global Foundation's trademark as soon as possible.'
Some last words for trade mark nerds
You will, of course, know that when it comes to issues of trade mark confusion courts apply the 'average consumer' test. In the Umbro case the court referred to this useful definition of the test, a definition that was first used by Kitchin LJ in the case of Comic Enterprises v Twentieth Century Fox (2016) EWCA Civ 41 at (34):
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