A world of pain

9th Dec 2019

Pound for pound, an unrepresented Applicant was outmatched, writes Oliver Tidman. O/539/19, FIVEPOUNDWORLD/5POUNDWORLD (Opposition), UK IPO, 12th September 2019.

On 27th September 2018, Vinod Chopra (the Applicant) applied to register the trade marks FIVEPOUNDWORLD and 5POUNDWORLD covering only class 35 services.

The application was opposed by Poundland Ltd under ss5(2)(b) and 5(3) of the Trade Marks Act 1994, based on its earlier UK and EU trade marks for POUNDLAND covering, inter alia, class 35 services.

The Opponent claimed that a likelihood of confusion existed between the marks and that POUNDLAND has a reputation for all goods and services covered by its earlier marks. It also argued the Applicant’s mark would take unfair advantage of and be detrimental to the repute and distinctive character of the POUNDLAND marks.

The unrepresented Applicant filed a counterstatement denying the grounds of opposition without requiring the Opponent to provide proof of use of its marks. While the Applicant filed no evidence, the Opponent filed substantial evidence to support the reputation of its marks.

Opposition factors

The Hearing Officer (HO) found the marks to be visually and aurally similar to a low to medium degree and conceptually similar to a medium degree.

Assessing the inherent distinctiveness of the Opponent’s marks, the HO recognised that although the conjoined words POUNDLAND allude to the characteristics of the services provided (retail services), the Opponent’s mark had acquired distinctiveness through extensive use. The relevant consumer would have an average degree of attention depending on the particular goods and services.

Applying the principles discussed in Meric, the HO concluded that the goods and services varied from being identical to similar to a low degree, with the exception of those found to be dissimilar.

It was noted that consumers may regard the addition of the number 5 or FIVE as a reference to a shop selling goods at a higher price and the HO considered the change from the word LAND to WORLD would not be a natural brand variant for the Opponent.

Evidence influential

Notwithstanding the fact that the Opponent’s marks had acquired distinctiveness, the visual, aural and conceptual differences were sufficient to counteract this and the HO concluded that there was no likelihood of either direct or indirect confusion under s5(2)(b).

However, the Opponent’s evidence demonstrated that a significant section of the relevant public would make a link between the marks and therefore use of the Applicant’s mark would take unfair advantage, and the Opponent successfully established a reputation for POUNDLAND for all the remaining class 35 services under s5(3).

Therefore, the Opponent was successful in blocking registration for all but services considered too far removed from its own (retail shop window display arrangement services).

Key points:

Always put an Opponent to proof of use when a mark is more than five years old
Visual, aural and conceptual differences between the marks were enough to avoid confusion for similar services
The Opponent successfully established that a reputation in POUNDLAND existed for almost all class 35 services and that a detrimental link would be made

Oliver Tidman is Founder and Managing Director of Tidman Legal