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POP trade mark – case review

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POP1

UKTM Application No. 3315911

Background

Positive Organisations & People Ltd (the Applicant) is the proprietor of UK Trade Mark Application No.  3315911 in Classes 35 and 41 (copy of mark shown).

This mark was opposed* by PSP COMPANY BVBA (the Opponent) under the fast track procedure on the basis of its earlier EUTM Registration Nos. EU016150773 (Mark 1) and EU016150807 (Mark 2) below in Classes 35 and 41 under Section 5(2)(b) of the Trade Marks Act 1994.

POP2

Mark 1

POP3

Mark 2

The Applicant filed arguments against the opposition arguing that there were clear differences between ‘POSITIVE ORGANISATIONS & PEOPLE’ and ‘People On Point’, which would be recognised by consumers.

A decision was made on the papers on 15 March 2019.

Comparison of the Services

Whilst the Applicant’s Class 35 services were limited to “business management consultancy in the field of executive and leadership development”, the Registrar considered these to be identical to the Opponent’s broad Class 35 services, namely, “business management analysis; business assistance and management; business and management advice, consultancy and information”.

This was on the basis that “[t]he purpose of business consulting services is to provide advice on how to develop and expand all aspects of a business including its management. A professional offering advice on how to run a business efficiently may reasonably include advice and assistance directed towards the skill set of the senior management team”.

With regard to the Class 41 services of the Applicant, which covered a range of coaching and training services, these were encompassed by the Opponent’s Class 41 services “coaching services; educational and training services”.

Average Consumer

The Registrar considered the average consumer to be both the general public and professional business users. Given the nature of the services, these are unlikely to be frequent purchases and require a not insignificant monetary investment such that careful consideration would be taken before selecting a provider.

The Registrar also felt that the services would be selected both via word of mouth and online, such that aural and visual factors must be considered.

Comparison of the Marks

The marks contain some complexities between them but overall the dominant and distinctive element is considered to be ‘pop’ in respect of all three marks.

The Registrar considered there to be a low to medium level of visual similarity, medium level of aural similarity and a good degree of conceptual similarity.

Decision

The Registrar felt that “a greater proportion of average consumers would primarily focus on the word pop and dismiss the additional elements entirely or remember that pop is an acronym but have limited recollection of the words that the acronym represents”. Therefore it would be this element that would be in the mind of the consumer, such that they would potentially consider the respective marks to be one and the same given the identical services, resulting in a likelihood of indirect confusion.

Accordingly, the Registrar found the opposition to be successful and registration refused. The Applicant was also ordered to pay £500 toward the Opponent’s costs under the capped costs for fast track proceedings.

Comments

It is worth noting that although the terms of a specification may not be exactly the same, they may be considered identical if they are found to effectively offer the same goods/services. This is likely to apply to services more than goods as services can be somewhat subjective.

Furthermore, if the dominant element of a stylised mark is similar to the dominant element of an earlier stylised mark, there is a real risk of confusion dependent on the similarity of the goods or services.

Charlotte Wilding 20 August 2019

*O/141/19 IN THE MATTER OF TRADE MARK APPLICATION UK 3315911 BY POSITIVE ORGANISATIONS & PEOPLE LTD TO REGISTER POP LOGO IN CLASSES 35 AND 41 AND THE OPPOSITION UNDER NO. 600000953 THERETO BY PSP COMPANY BVBA


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