Taking into account the judgment of the European Court of Justice in L’Oréal v Bellure C-487/07, Daniel Alexander QC overturned the hearing officer’s decision rejecting an opposition by Beko against Socks World’s application for the stylised trade mark BEKO SPORT, finding that use in the United Kingdom of the mark would take unfair advantage of the distinctive character or repute of Beko’s earlier BEKO mark under Section 5(3) of the Trade Marks Act 1994.

BACKGROUND

Socks World applied for a UK trade mark in Class 25 covering “clothing, footwear and headgear” for BEKO SPORT.

Beko, part of a substantial Turkish-based group of companies supplying white goods throughout Europe under the BEKO mark, opposed the application under Section3(6) (bad faith) and Sectyion5(3) (unfair advantage) of the Trade Marks Act 1994, basing its opposition on three UK registrations for BEKO in Classes 7, 9 and 11. Evidence showed that the mark was first used in the UK in 1991 as a word mark and in a distinctive, stylised font. Since then there had been substantial use on white goods. Beko also claimed a reputation in sport due to its sports sponsorship arrangements, in particular with Millwall FC which had featured the BEKO mark prominently on players’ shirts.

The hearing officer, making the decision prior to L’Oréal, rejected Beko’s opposition.

DECISION

On appeal, Mr Alexander agreed with the hearing officer’s finding that BEKO’s earlier marks would be known by a significant part of the relevant public and have a reasonably strong reputation.

Mr Alexander confirmed that the marks were “similar to a very high degree” as the only difference between the BEKO SPORT and the earlier BEKO marks was the addition of the word SPORT. In every other respect (particularly the font) the marks were virtually identical. Further, there was no explanation from Socks World as to why it had used the same font.

Mr Alexander agreed with the hearing officer that whilst Beko had promoted its marks in a sporting environment through advertising and sponsorship, it did not have a sporting reputation as such. However, the “heart of the objection” was that the Applicant sought to register the identical mark of the shirt sponsor of a football club. Accordingly, what mattered was the sporting connection with clothing that the sponsorship of the Millwall FC had produced.

Mr Alexander further found that the case based on Beko’s reputation in the BEKO mark in respect of household goods had not been sufficiently analysed.

Following L’Oréal, the UK Intellectual Property Office (IPO) could now give greater weight to Beko’s evidence that Socks World intended to benefit from the reputation of Beko’s earlier BEKO marks, the “intention” factor now being relevant to the question of unfairness.

Mr Alexander considered whether: (a) the evidence showed that use by Socks World of the application mark would obtain an advantage by benefiting from the power of attraction, the reputation and the prestige of Beko’s earlier marks and exploit Beko’s marketing efforts without making any such efforts of its own, without compensation for any loss caused to Beko or for the benefit gained by Socks World; and (b) Socks World was attempting to ride on the coattails of the reputation of Beko’s earlier marks.

Allowing Beko’s opposition under Section5(3), Mr Alexander held that unfair advantage had been taken of Beko’s marks. He emphasised the virtual identity of the respective marks, having particular regard to the specific font and design chosen by Socks World, which had been inadequately explained and the fact that it was not possible to think of any other reason for the adoption of that specific mark other than to signal a connection with Beko and the reputation in its earlier marks.

The fact that the sponsorship deal with Millwall FC meant that the BEKO marks were featured prominently on player’s shirts brought Beko’s reputation in white goods closer to sports clothing and consequently the goods covered by Socks World’s application.

Although it was not strictly necessary to consider the bad faith aspect of Beko’s claim, Mr Alexander found that the evidence showed that Socks World knew of Beko’s marks and, specifically, that the mark was featured on football shirts. However, there was no evidence that Socks World intended to deprive Beko of use of the BEKO mark or to use the mark so as to extract money from Beko. Consequently, not all the ingredients for a finding of bad faith were present and the hearing officer’s decision was upheld.

COMMENT

The lack of evidence as to why Socks World adopted the BEKO SPORT mark and used exactly the same font as Beko’s registrations (i.e. an examination of Socks World’s intentions at the time the application was made) coupled with the fact that the marks were virtually identical was key to Beko’s success.