O/0210/23, Shenzhen Shangsi Yimao Technology Co Ltd v TikTok Information Technologies UK Ltd, UK IPO, 28th February 2023
SUCCESS TIME
FOR TIKTOK

Rebecca Field sets out why fikfok failed in its application
KEY POINTS
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The Registrar will go through s5(3) in detail
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Even if reputation is proven and it is accepted that a mark has been enhanced through use, this is only the first hurdle to overcome under the s5(3) ground
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The “link” aspect is crucial and much more specific evidence required, especially if the goods and services are far removed.
MARKS

Opponent’s trade marks (“the First Earlier Mark”)
Opponent’s trade marks (“the First Earlier Mark”)

Opponent’s trade marks (“the Second Earlier Marks”)
Opponent’s trade marks (“the Second Earlier Marks”)

Applicant’s trade mark
Applicant’s trade mark
Shenzhen Shangsi Yimao Technology Co Ltd (the Applicant) applied to register the trade mark “fikfok” for class 20 goods on 7th September 2021 and the application was advertised on 12th November 2021. The Applicant sought registration for class 20: “Luggage racks being furniture; magazine racks; mattresses; office furniture; sofas; tables; wardrobes; shelving; shelves for storage; inflatable furniture.” The application was formally opposed by TikTok Information Technologies UK Ltd (the Opponent). The opposition was based upon s5(2)(b) and s5(3) of the Trade Marks Act 1994 (TMA), so two grounds of opposition were put forward.
Rights asserted
It is important at this stage to set out the earlier registered rights that were relied upon by TikTok under the different grounds of similarity and then reputation. The Opponent relies upon the following trade marks:
1. TikTok – under s5(2)(b), UK registration no. UK00918184341 (the first earlier mark), filing date 21st January 2019, registration date 13th February 2020.
2. TikTok Tik Tok (series of 2) – under s5(2)(b), UK registration no. UK00003469520 (the second earlier mark), filing date 24th February 2020, registration date 9th August 2020.
3. TikTok Tik Tok (series of 2) – under s5(3), UK registration no. UK00003469550 (the third earlier mark), filing date 24th February 2020, registration date 9th August 2020.
The main claims
In relation to similarity, the Opponent relied upon class 20 goods, which the first two registrations covered, and argued likelihood of confusion because of the identity/similarity of the goods (Applicant goods are class 20 goods) and then high degree of visual and aural similarity between the marks themselves.
The Opponent claimed to have a “substantial reputation” for some of its goods and services for which the third earlier mark above is registered. The Opponent also claimed that: “use of the Applicant’s mark will cause detriment to the reputation of the third earlier mark if the goods are of inferior quality, which is likely to have a negative impact on the image, prestige and huge reputation of the third earlier mark and its power of attraction will therefore be reduced. Lastly, the use of the Applicant’s mark will cause detriment to the reputation of the third earlier mark because it will dilute the distinctiveness.”
Proceedings and evidence
The Applicant filed a counterstatement denying that the marks were visually, aurally and conceptually similar; the goods/services element was not contested. The Opponent was required to file proof of repute as to the acquired reputation with regards classes 9 and 45.
TikTok filed submissions and evidence in chief in the form of a witness statement and 16 exhibits from TikTok’s representatives.
Goods and comparison
Before finding the Opposition based on s5(2) successful, the Registrar went through the tests for comparison of goods. The Registrar stated: “I consider that ‘beds’ in the first earlier mark’s specification is similar to the Applicant’s ‘mattresses’. I note that beds are a piece of furniture which are designed to hold a mattress which allows the user to sleep… as they are used together, the average consumer would assume that they come from the same undertaking, and that they are important and indispensable to one another. Therefore, they are complementary. The goods also overlap in distribution channels and users. Consequently, the goods are similar to a medium degree.”
The Registrar determined that:
- Marks are visually similar to a high degree – marks coincide in the second, third, fifth and sixth letters. Spacing between marks is a minimal difference;
- Marks are aurally similar between a medium and high degree, so that the average consumer is most likely to pronounce the applicant’s mark as FIK-FOK and as the marks overlap in the IK and OK of the first and second syllables;
- Marks are conceptually dissimilar – given the Opponent linkage to “Ticktock”;
- Distinctiveness of a mark can be enhanced by the use made of it – evidence was only filed for classes 9 and 42, and not class 20; and
- Confusion can be direct or indirect – both forms of confusion were considered and likelihood of direct confusion found, due the effect of interdependency principle.
Section 5(3)
In pursuing its s5(3) ground, the Opponent relied only on the following goods and services under its third earlier mark: class 9, “Application software; application software for smartphones” and class 45, “Online social networking services”.
The Registrar went through the relevant criteria for reputation based on case law (General Motors etc) and stated that the relevant date for the assessment under s5(3) is the date of application, 7th September 2021.1
A number of observations were made about the evidence, but the main issue for TikTok was the absence of a “link” (see Intel), which is a key part of being successful under s5(3). Any evidence filed must cover all the aspects, including a mark’s inherent distinctiveness or distinctiveness acquired through use. A link is considered established where the relevant public would bring the Opponent’s marks to mind when confronted with the Applicant’s mark – so that it makes a link between the marks. So, would seeing fikfok create a link to TikTok in the mind of the consumer?
The Registrar made three key points that establish why in this case the s5(3) ground was not successful:
1. A link could not be evidenced between the Applicant’s furniture goods and the Opponent’s software and social networking services.
2. The Opponent’s reputation is not strong enough to bridge the gap between the Applicant’s goods and the Opponent’s goods and services.
3. The distance between the goods and services is sufficient to offset the similarity of the marks.
Thus, TikTok was victorious in this opposition. A key takeaway from this decision is the detail in which the Registrar will go through s5(3). So, even if reputation is proven and it is accepted that a mark has been enhanced through use, this is only the first hurdle. It also seems the “link” is crucial and may suggest the need to file more specific evidence, especially if the goods and services involved are far removed.
[1] Notably C-375/97, General Motors; C-252/07, Intel; C-408/01

Rebecca Field is a Chartered Trade Mark Attorney and Partner at HGF Ltd
rfield@hgf.com
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