A recent UK Intellectual Property Office (UKIPO) invalidity decision provides a good reminder in relation to non-use aspects of trade mark opposition and invalidity actions.
An trade mark invalidity application can be issued to challenge the registration of a trade mark (warning: trade marks can be subject to challenge even when registered). In case O/0815/24 Red Bull GmbH applied to invalidate Ahura Middle East General Trading's UK trade mark no. 918006230 for WAR WINGS (figurative) in relation to "energy drinks; beer".
Red Bull based its invalidity application on its GIVES YOU WINGS (word) UK trade mark no. 900635391 which is registered in relation to "non-alcoholic beverages, namely energy drinks". Red Bull took a position that there was a likelihood of confusion between its GIVES YOU WINGS trade mark and the WAR WINGS trade mark, and also that the WAR WINGS trade mark would damage the reputation Red Bull has in its GIVES YOU WINGS mark.
Ahura Middle East went onto deny these claims and stated there was not a likelihood of confusion between the two marks. Ahura Middle East also required Red Bull to prove use of its trade mark (trade marks need to be used in order for the rights to be enforceable) and that Red Bull had the claimed reputation.
Red Bull provided evidence in which its IP Counsel said "At the outset, [Red Bull] highlights that the Gives You Wings Mark is closely interrelated to the Red Bull brand, having been used as a slogan in its marketing and advertising material for the Red Bull energy drink for nearly 40 years."
These wings were quickly clipped: after reviewing the evidence provided by Red Bull, the Hearing Officer posed two questions. First whether the mark used alongside RED BULL is acceptable and secondly whether use of GIVES YOU WIIINGS (as opposed to GIVES YOU WINGS) is acceptable. This turns to be a question of whether Red Bull's use of the mark is an "acceptable variant" (i.e. because Red Bull did not provide evidence of its use of GIVES YOU WINGS but instead provide evidence of it using "RED BULL GIVES YOU WIIINGS".
The Hearing Offer found that use of the mark with "RED BULL" was an acceptable variant as the mark would still be seen as an indication of origin with the RED BULL mark affixed to it.
In relation to whether "GIVES YOU WIIINGS" was an acceptable variant of GIVES YOU WINGS, the Hearing Officer's energy was low as he found that spelling "wings" with three "i's" was not a common misspelling and is an irregular presentation of the word. This alteration, in the Hearing Officer's view, alters the distinctive character of the mark.
On the basis that Red Bull did not provide evidence of use of an acceptable variant of its trade mark, the invalidity application failed.
The case is a good reminder of some key trade mark principles:
First, ensure the brand you use is also the one you register. Owing to the requirement that trade marks need to be used in order to remain valid and enforceable, registering a mark that you do not use (even if the difference between the marks is two "i's") can cause significant issues.
Second, a trade mark opposition or invalidity application should only be brought where there is sufficient evidence of use. If there are doubts about the evidence that can be provided, then it can be very beneficial to take a step back before opposing/applying to invalidate.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.