Happy outcome for MySmile

4th Mar 2020

Amy Galloway describes why this opposition had no teeth. O/698/19, MYSMILE (Opposition), UK IPO, 15th November 2019

teeth

The UK IPO has rejected an opposition by Integrated Dental Holdings Ltd (the Opponent) against EZGO Group Inc’s (the Applicant) application for figurative mark MySmile in class 3 (the Application).

my dentist logo
Opponents UKTMs

The Opponent based its opposition on s5(2)(b) of the Trade Marks Act 1994 and relied upon six UK trade mark registrations, which are registered in a number of classes, including class 3 (the Registrations). As the goods in class 3 of the Application and the Registrations were largely identical (eg, dental bleaches, cleaning preparations), the decision turned on the comparison of the signs and the subsequent likelihood of confusion. 

Comparison of signs

Opponents UKTMs

Of the Registrations, the UK IPO focused on MY DENTIST (word mark), {my}skin (figurative mark) and MY (word mark), with the other three signs being swiftly dismissed due to the additional elements and stylisation.

On MY DENTIST, while the visual and aural identity of “My” was recognised, the different ensuing words and additional figurative “lips” device in the Application culminated in a finding of a low degree of visual and aural similarity. The overlap in the meaning of “a smile” (an expression of mouth/teeth) and “a dentist” (who treats teeth), led to a medium degree of conceptual similarity.

On {my}skin, despite both marks including “My” and “Smile”, the stylistic differences, varying size and position of “Smile” and extra wording in the earlier mark resulted in only a low degree of visual similarity. Whether the earlier mark would be articulated as “my skin” or “my skin: frame your smile”, a low degree of aural similarity was found, and as both marks refer to the human body (skin and mouth), the UK IPO found conceptual similarity to a low degree.  

my dentist logo
Opponents UKTMs

On MY, the similarity between this earlier mark and the Application rested solely on the word “My”. Given the addition of “Smile” and the figurative element in the Application mark, the UK IPO found the marks were visually and conceptually similar to a low degree, with there being a medium degree of aural similarity. 

Likelihood of confusion

my skin logo
Opponents UKTMs

The representative of the Opponent referred to a “family of marks” argument during the hearing. However, as it was not pleaded in the TM7, the UK IPO did not consider this claim in assessing the likelihood of confusion. 

My smile logo
The applicants figurative mark

As a result of the differences between the signs, with the highest degree of similarity being a medium degree, no likelihood of direct confusion was found. While it was accepted that the start of a mark – in this case the identical ‘My’ – usually makes a greater impression than the end, less weight is given when the beginning is common and non-distinctive. The UK IPO concluded that even the identity of the goods did not offset the low degree of similarity between the marks.

Key points

  • Where a common and non-distinctive element is the main similarity between signs, confusion is less likely to occur
  • If you intend to refer to a claim at a hearing, this should be included in the initial pleadings and supported by filed evidence
  • The beginning of a mark does not always make the greatest impression, especially when proceeded by stylisation and elements that are more distinctive

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