One shining success

4th Mar 2020

A comeback is unlikely for Unicorn Co., reports Emilia Petrossian. O/726/19, UNICORN SHIMMER (Opposition), UK IPO, 29th November 2019

ice cream cone

On 2nd October 2017, Popaball Ltd (Popaball) applied to register UNICORN SHIMMER in classes 2 and 30. Unicorn Shimmer Co. Ltd and Danielle Broomfield (Unicorn Co.) filed a joint Notice of Opposition against this application based on passing off and bad faith (the first opposition).

On 27th February 2018, Unicorn Co. applied to register ‘Unicorn Shimmer’ in classes 30 and 32, which was opposed by Popaball (the second opposition) on the grounds of likelihood of confusion with its application for UNICORN SHIMMER. 

First opposition

To succeed in its passing off claim, Unicorn Co. had to show that it had acquired goodwill prior to the filing date of Popaball’s application. Danielle Broomfield claimed to have use of UNICORN SHIMMER since 19th September 2017, namely via Facebook and Instagram, on unicornshimmerco.co.uk and via Unicorn Shimmer Co. Ltd, incorporated on 27th October 2017. Therefore, Unicorn Co. needed to show significant goodwill over a very short period of time.

Goodwill despite a relatively short period of trading can be established by providing evidence of “substantial takings”. However, although Unicorn Co. provided evidence of use such as its Facebook page having reached one million hits, there was no evidence of associated sales. Therefore, the UK IPO found that Unicorn Co. did not acquire protectable goodwill prior to the application date. Accordingly, this ground failed.

Unicorn Co. also claimed bad faith, as Popaball had filed its application despite being aware of Unicorn Co’s advertisements. However, the Registrar did not consider Popaball to be acting in bad faith, as it had taken action to avoid conflict by conducting searches prior to filing (Unicorn Co.’s application had not been filed at that stage) and was merely seeking to protect its own interests and further its business in a market in which it was already operating (under the mark SHIMMER).

The Registrar found that Popaball’s “behaviour could be considered distasteful or sharp business practice, but that in itself is not sufficient for a finding that the Opponent has acted in bad faith”. The ground of bad faith therefore failed, and, given that both grounds failed, the opposition failed.

Second opposition

The Registrar confirmed that marks are identical if the only difference is the use of upper or lower case, as this is insignificant and will go unnoticed by the average consumer. Accordingly, given the identical/similar goods, there was a likelihood of confusion. Popaball’s opposition against Unicorn Co. therefore succeeded and Popaball was awarded costs.

The first decision confirms the need for substantial use to demonstrate goodwill if the period claimed for passing off is short. Further, prior knowledge of use of a mark does not necessarily result in bad faith if the Applicant is merely seeking to protect its own existing business.

The second decision highlights the fact that marks may be identical when using different cases, where no stylisation or additional elements are applied. Unicorn Co. had until 28th December 2019 to appeal both oppositions but did not do so. Given that Popaball appears to have prior use of UNICORN SHIMMER, it is unlikely that Unicorn Co. would have succeeded.

Key points

  • Passing off over a short period of time cannot be found without prior established goodwill and reputation or substantial takings
  • Detailed evidence of reputation is key
  • Prior knowledge of a mark before filing, and filing due to that knowledge, is not sufficient for bad faith

Author