Lads brand shows its strength
Joel McDonald stresses the role of robust evidence. O/804/18, THEUNIBIBLE and Device (Opposition), UK IPO, 13th December 2018.
O/804/18, THEUNIBIBLE and Device (Opposition), UK IPO, 13th December 2018
Key points
- Good evidence can be crucial to success
- When compiling evidence, consider what you are trying to show and whether the evidence you have goes towards proving your case
Florentyna Dawn Ltd (the Applicant) filed an application to register the trade mark THEUNIBIBLE and device on 23rd December 2016 for a range of goods and services in classes 9, 38 and 41. The application was opposed by The LADBible Group Ltd (the Opponent) under s5(2)(b), s5(3) and s5(4)(a) of the Trade Marks Act 1994. The earlier rights the Opponent relied on were its UK and EU trade mark registrations for a family of BIBLE trade marks, including THE LAD BIBLE, THE SPORT BIBLE and THE FOOD BIBLE.
Both parties filed evidence, the Opponent’s consisting of two witness statements from its head of finance, and the Applicant’s consisting of examples of other BIBLE trade mark registrations and applications, and use of other BIBLE marks by parties not associated with the Opponent. A hearing took place on 26th June 2018.
Section 5(2)(b)
The Hearing Officer (HO) found that the marks were visually similar to a low degree, but aurally and conceptually similar to a medium degree. Turning to the distinctiveness of THE LAD BIBLE, the HO found the mark to be distinctive to a normal degree for some class 9 goods (such as glasses, and cases for mobile phones and personal electronic devices), but of low inherent distinctive character for the remaining goods and services, which broadly related to online publishing, telecommunication services, social media, online magazines and entertainment. However, the HO found, due to the Opponent’s use of THE LAD BIBLE, as evidenced in the witness statement, that it had acquired enhanced distinctiveness in the mark.
The HO believed that the enhanced distinctiveness of THE LAD BIBLE mark meant there was a likelihood of confusion between THE LAD BIBLE and THEUNIBIBLE for all goods and services, with the exception of “eyewear; glasses; spectacles; sunglasses; lenses; frames for spectacles and sunglasses; cases and boxes for spectacles and sunglasses; cords, straps and chains for spectacles and sunglasses; digital photograph frames; covers and cases for mobile phones, computers and personal electronic devices” in class 9.
Section 5(3)
The HO was satisfied, based on its earlier findings, that it was clear the Opponent had obtained a significant reputation in THE LAD BIBLE for publication of news, information and entertainment (including original and user-generated content). The analysis under s5(2)(b) also satisfied the HO that the Opponent’s THE LAD BIBLE mark will be brought to mind on seeing the THEUNIBIBLE mark, with the exception of those goods for which no likelihood of confusion had been found. As a result, the HO believed THEUNIBIBLE would take unfair advantage of THE LAD BIBLE in respect of all services in classes 38 and 41 applied for by the Applicant.
Essential evidence
This case shows the importance of good evidence. The strength of the Opponent’s evidence allowed it to prove the enhanced distinctiveness of its mark and the reputation it owned in it. It was ultimately this that got it over the line in this matter.
Stobbs represented the Opponent in this case
Joel McDonald is a Chartered Trade Mark Attorney at Stobbs