Beats comes out best
The UK IPO’s softer stance on distinctiveness may have helped here, suggests Michael Green. O/703/19, Beats Electronics LLC v Virtual Jukebox Ltd UK IPO, 21st November 2019
Beats Electronics LLC (Beats) filed an opposition on 19th October 2016 against UK Application No. 3171040 for the word mark BAR BEATS, filed by Virtual Jukebox Ltd (Virtual) on 23rd June 2016. The application covered goods/services in various classes, including 9, 41 and 42, which were all the subject of opposition.
Beats based its opposition on a family of marks, including EU registrations and IR equivalents for a number of marks, including BEATS, BEATS MUSIC and BEATS 1, covering various terms included in classes 9, 38, and 41.
It claimed likelihood of confusion under s5(2)(b) of the Trade Marks Act 1994 and relied upon s5(3) to claim a reputation, particularly in relation to headphones and loudspeakers.
Virtual put Beats to proof of use of its vulnerable EU registrations and claim of reputation. It also argued that the term BEATS is descriptive/non-distinctive, along with the dissimilarity of the respective marks and goods/services.
The Hearing Officer (HO) first concluded that the evidence presented by Beats was sufficient to maintain the EU marks as a basis of opposition. Interestingly, when considering the distinctiveness of Beats’ marks, the HO stipulated that “although beat is a unit of music, the word BEATS cannot be used to describe a musical recording”. He therefore found BEATS MUSIC to be distinctive to a low to medium degree.
When comparing the marks and goods/services at issue, he found a medium degree of visual and aural similarity between the marks, but the conceptual assessment varied based on whether the average consumer would appreciate the musical connotation of BAR BEATS. Moreover, a number of the Beats’ goods/services covered were found to be identical or highly similar to Virtual’s.
As such, the HO found a likelihood of both direct and indirect confusion between BAR BEATS and CLUB BEATS, but only a likelihood of indirect confusion with BEATS solus. The HO concluded that Beats had established a reputation in BEATS for “headphones, earphones and audio speakers”, a conclusion reached despite most of the evidence relating to the BEATS BY DR DRE mark.
However, the dissimilarity between the remaining goods/services was sufficient to preclude any finding of a link between the marks and so the reputation established did not materially alter the HO’s earlier decision. Beats was therefore partially successful in relation to those goods/services found to be identical or highly similar.
The fact that Beats established a reputation in BEATS solus, despite a large chunk of its evidence relating to the BEATS BY DR DRE mark, highlights how reputation can be achieved even when a mark is used in close conjunction with another brand or artist, and where the quantity of evidence is not always the deciding factor.
Further, the apparent finding of direct confusion between CLUB BEATS and BAR BEATS is noteworthy, as this has been rationalised on the basis of conceptual similarity between CLUB and BAR, along with the common BEATS element, which is arguably inherently weak. To find a low to medium level of distinctiveness, despite those goods being equipment that includes “beats”, reaffirms the slightly softer criteria used by the UK IPO when establishing distinctiveness. The EUIPO’s stance in analogous oppositions involving Beats (nos. B002164906 and B002472937) found the mark to be only “allusive” in respect of these goods.
This raises a further question: would the EUIPO’s interpretation of distinctiveness have led to the case being decided in the same way?
Key points
- Beats managed to establish a reputation for its mark despite a large amount of evidence relating to the BEATS BY DR DRE mark
- Direct confusion appears to have been found between CLUB BEATS and BAR BEATS solely on the basis of conceptual similarity between CLUB and BAR, along with the common BEATS element