In the space of a month, two identical trade marks were filed for the same categories of products and services – is this allowed?
Two different people under the Greta Thunberg umbrella went to register the Friday’s for Future mark in the same classes.
Although this is technically allowed, unless one of the applicant’s objects, it isn’t necessarily the best approach.
The first trade mark
Janine O’Keeffe, the organiser of Thunberg’s popular fridaysforfuture.org website, recently registered a European Union trade mark (EUTM) covering a broad but sensible range of goods and services for the mark.
This Fridays for Future trade mark, EUTM No. 018147674, was filed on 5th November 2019 and successfully registered on 22nd May 2020 and covered a range of classes.
The second trade mark
The other registration for the identical trade mark, EUTM No. 018171380, is owned by Greta Thunberg’s ‘Stiftelsen The Greta Thunberg and Beata Ernman Foundation’.
It was filed on 23rd December 2019 for a variety of identical and different classes than the first trade mark.
Why is this a bad strategy?
It makes it difficult for consumers to distinguish the difference between each trade mark when ideally the general principle is not to confuse consumers.
The definition of a trade mark can be summarised as any sign which can distinguish the goods or services of one trader/provider from those of other traders/providers.
If trade marks are meant to distinguish the providers of goods/services, two identical trade marks, covering identical goods and services, owned by two different owners, is confusing for consumers.
A simple assignment from O’Keeffe to Thunberg’s foundation may be the better option.
Two identical marks filed roughly a month apart by different owners for identical/similar goods and services in the same environmental arena is not ideal.
The recurring problem of unaffiliated third-party applications for these types of marks, may be more difficult to challenge without an existing registration.
If you’re thinking about registering a trade mark, speak to a Chartered Trade Mark Attorney first to put the right steps in place.
Associate - Trade Mark Attorney , Elkington & Fife LLP