In a recent decision (O/0458/25) of the UK Intellectual Property Office, Valve Corporation ("Valve") has been largely successful in its opposition against the registration of a trade mark application for the word SOURCE covering certain software and other goods in Class 9. The decision will be of particular interest to video games and other technology companies with trade mark registrations covering computer software.
Comparison of marks and grounds of opposition
Valve initially relied on two earlier registrations for SOURCE and VALVE SOURCE, marks associated with its Source and Source 2 video game engines. By the time of the decision, the opposition relying on VALVE SOURCE had been withdrawn following a preliminary indication by the Tribunal that the opposition would fail in respect of the ground of opposition under s. 5(2)(b) Trade Marks Act 1994 (TMA).
s. 5(2)(b) would have required Valve to show that, in view of the similarity of the relevant marks and the similarity/identity of the respective goods, there existed likelihood of confusion. The reasons for the preliminary indication were not shared. However, given that the preliminary indication also found that the opposition would succeed on the remaining grounds, it may have been concluded that there was no need to maintain s. 5(2)(b).
The opposition proceeded on the basis of s. 5(1) TMA (which required Valve to show that the application related to an identical mark and goods identical to those for which its earlier SOURCE mark was registered) and s. 5(2)(a) TMA (which required Valve to show that the application related to an identical mark, and that the goods were identical/similar, such that there exists a likelihood of confusion).
Although the mark relied upon was over 5 years old at the time of the application, the applicant did not elect to require Valve to provide evidence confirming that they had been used for all the relevant goods. The Tribunal therefore proceeded on the basis that Valve was entitled to rely upon all goods identified in its notice of opposition.
The applicant, Helesi Poder, had applied for a series of 3 word marks (being "Source" "source" and "SOURCE") which, for the purposes of the opposition, were found to be self-evidently identical to the word SOURCE. The Tribunal confirmed that the differences in case between the marks in the series did not affect their identity with Valve's mark, because word marks protect the words within them as such, regardless of case used.
Comparison of goods
The application covered goods and services in Classes 9, 38, 42 and 45. Valve opposed the application in Class 9 only. The key issues to be determined to resolve the opposition were: (i) the extent to which the Class 9 goods in the application were identical or similar to the Class 9 goods covered by Valve's registration; and (ii) insofar as the goods were similar rather than identical, whether there existed a likelihood of confusion.
The Tribunal recited previous case law concerning the comparison of goods, including that all relevant factors must be considered, such as their nature, intended purpose, method of use, and whether they are in competition or complementary, following the decision in Canon v MGM (C-39/97).
The Tribunal also referred to the approach outlined in Sky v Skykick ([2020] EWHC 990 (Ch) at [56]), requiring that general terms should be interpreted as covering the goods or services clearly covered by the literal meaning of the terms, and not other goods or services, and that an unclear or imprecise term should be narrowly interpreted as extending only to such goods or services as it clearly covers.
We would note that the question of the validity of the general term "computer software", which was considered in the long-running Skykick dispute, did not arise here. Valve's claim in respect of software covered the more precise term, "computer software used to create three dimensional graphical environments, including capabilities for animation, artificial intelligence, sound, simulation and networking".
Applying these principles, the Tribunal found that "mobile software," "platform software," "mobile apps," "downloadable mobile applications," "downloadable software," "software downloadable from the internet," and "community software" in the application to be identical to Valve's computer software term. This was because these terms were broad enough to include the specific types of software claimed by Valve.
The applicant's mark also covered a "database engine", which was found similar to the "data processing equipment and computers" covered by Valve's mark to at least a low degree, as both are involved in data processing, and may be provided by the same supplier. Applying similar reasoning, "telecommunications software" and "communications software" were also found similar (to a low degree) to Valve's claim for "apparatus for recording, transmission or reproduction of sound, at the exclusion of musical sound, or images".
On the other hand, certain other types of software applied for were found dissimilar to those in the Valve specification, such as "search engine software", which had a specific purpose that did not overlap with that of Valve's software for creating 3D graphical environments.
Outcome
In relation to the computer software goods which were identical to those covered by the Valve mark, the opposition succeeded under s. 5(1) TMA. In relation to the similar goods, it was found that there existed likelihood of confusion, particularly in view of the identity of the marks. Accordingly, the opposition was also successful under s. 5(2)(a) TMA. The opposition failed in relation to the dissimilar goods.
This decision is most notable for its illustration of the principles of specification interpretation, and in particular that identity or similarity of goods will not be assumed merely because both the earlier registration and opposed application relate to software. It will always be necessary to consider whether there is truly an overlap in the type of software covered by the respective marks. At the same time, the principle of interdependence means that where marks are identical, even a lower degree of similarity between goods may be sufficient for a finding of likelihood of confusion.
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.
