Taser International, Inc. have successfully prevented registration of the mark TAZER at the Community Trade Marks Office (OHIM), based on the European-wide reputation of the TASER brand. The OHIM Opposition Division decided on 28 May 2014 that the applicant’s attempt to register the mark TAZER for software and a range of services, relating for example to social networks, was likely to take advantage of the reputed TASER mark.
Mewburn Ellis LLP partner Sofia Arenal, who has extensive experience of oppositions and other contentious proceedings, guided Taser International, Inc. through the collation and preparation of the substantial amount of evidence presented in a “witness statement”. The evidence and arguments presented on behalf of Taser International, Inc were praised by the Opposition Division. “All of the assertions contained in the witness statement are backed up by independent and impartial sources of evidence”. “The arguments of the opponent are extremely well developed and are completely plausible.” Such praise from the Opposition Division is not common.
This case is also an unusual example of OHIM deciding an opposition on the basis of the more complex ground that an earlier mark has a reputation, and that the reputation or distinctive character will either suffer from use of the junior mark, or that the junior mark takes advantage of the senior mark, for example by free-riding on the reputation. The relevant article of the Community Trade Mark Regulation is 8(5). The more legally straightforward pleaded case based on likelihood of confusion (art 8(1)(b) was not even assessed in TASER v TAZER. It is OHIM’s usual practice to limit examination of an opposition to a single ground if it can be upheld based on one ground.
The decision confirmed that the TASER trade mark has a reputation across the EC for various kinds of weapons and accessories, and also training services. The TASER brand is best known in relation to electronic control devices, or ‘stun guns’. Understandably, there is debate around the world about the use of stun guns. Taser International, Inc’s evidence was open about this, allowing the examiner to conclude “the evidence as a whole clearly demonstrates that the brand is reputed and indeed any negative connotations are balanced by the positive assertions”.
A copy of the full decision is available here.