Reputation leads to rejection
Laura Robyn explains how LinkedIn ironed out a trade mark kink. O/178/19, KINKEDIN (Opposition), UK IPO, 4th April 2019.
O/178/19, KINKEDIN (Opposition), UK IPO, 4th April 2019
This case concerns an opposition by LinkedIn Ireland Unlimited Company against an application to register the mark KINKEDIN in class 45 for personal introduction, networking and online dating services filed by JK Solutions (the Applicant). The Applicant was not professionally represented.
Relying on its earlier EU registrations, the Opponent claimed a likelihood of confusion exists as well as a reputation and goodwill in LINKEDIN for all its class 45 services including “social introduction and networking services; licensing of computer software and other technology”.
Considering the Opponent’s strongest base, the Hearing Officer (HO) found identity between the personal introduction and dating services in the application and “social introduction and networking services” in the earlier LINKEDIN word mark registration. The applied-for licensing services were similar to a medium degree to the Opponent’s “licensing of computer software and other technology”.
The HO determined the average consumer for networking services is a member of the general public paying a medium degree of attention. By contrast, the consumer of licensing services is a professional paying a reasonably high degree of attention (given the long-term ramifications). The purchasing act for both was held to be primarily through visual means, and possibly oral recommendations.
Turning to the Opponent’s evidence the HO remarked it “could have been stronger” but found the mark had become distinctive to a reasonably high degree. The marks were found to be visually and aurally highly similar, but conceptually different since KINKED would be easily understood by UK consumers to mean “abnormal” (including in the context of “unusual sexual proclivities”), whereas KINKEDIN does not have a clear, immediate meaning. Conversely, LINKEDIN would be understood to mean “being connected”. The conceptual difference of the marks counteracted their visual and aural similarity. Consequently, there was no confusion and the s5(2)(b) claim fell.
The Applicant explicitly conceded that the Opponent has a significant reputation for all services relied on. Applying intel, the HO employed the same findings of (dis)similarity between the services as in the s5(2)(b) claim and concluded the strong reputation and closeness of the marks were sufficient to establish the link.
She then turned to two of the three heads of damage advanced by the Opponent: tarnishing and unfair advantage. Noting that while the Applicant’s services are not unpleasant or obscene, the sexual connotations of KINKEDIN would nevertheless sully the Opponent’s professional networking reputation.
With regard to unfair advantage, based on the Opponent’s evidence showing the Applicant’s social media made reference to LINKEDIN, the HO concluded that the Applicant “subjectively intended to exploit the Opponent’s reputation”. This non-hypothetical risk of unfair advantage being taken was sufficient. There was no need to consider detriment to distinctive character as the s5(3) claim succeeded.
Noting that the Opponent had a protectable goodwill in respect of business networking services, the HO confirmed the passing off claim failed as there was no likelihood a substantial number of the Opponent’s consumers would be deceived, so use of KINKEDIN could not constitute misrepresentation. The opposition was successful on the basis of the reputation claim, and the application was rejected in its entirety.
- Despite finding a reasonably high enhanced degree of distinctive character in LINKEDIN, the HO concluded the conceptual difference between KINKEDIN and LINKEDIN was sufficient to defeat the high degree of visual and aural similarity and the primarily visual purchasing act
- A limited but targeted amount of evidence can be sufficient to show a mark has an enhanced distinctive character
- Where there is no likelihood of confusion (s5(2)(b)), a claim for passing off based on the same trade mark is also likely to fall at the misrepresentation hurdle
- In the absence of representation, the Applicant made an important concession on reputation and did not put the Opponent to proof of use, so the latter was entitled to rely on notional use across the full width of the specifications of its three earlier rights
Laura Robyn is a Trainee Trade Mark Attorney at Haseltine Lake Kempner LLP
Trainee Trade Mark Attorney, Haseltine Lake Kempner LLP (Bristol)