The Ford Motor Company have been successful in an opposition to prevent registration of the trade mark FRAUD (Device) (figure 01, below) fi led by Fraud Music Company (Fraud Music) for clothing, headwear and footwear in class 25 in the UK.
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Figure 01: Fraud
It seems this trade mark hit the UKIPO’s blind spot and was accepted for registration despite indicating an illegal activity and should have been refused registration on the basis that it is contrary to public policy or to accepted principles of morality. So it was left to Ford to challenge on the basis of their earlier trade mark rights in their FORD logo (figure 02).
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Figure 02: Ford
Ford’s grounds for opposition were broad and included:
- likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994 (TMA);
- damage to reputation under section 5(3) TMA; and
- common law rights under section 5(4)(a) TMA.
The hearing officer took the view that Ford’s strongest position was relying on its reputation and asserting that Fraud Music’s use would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier FORD logo.
On this basis, Ford claimed that use of Fraud Music’s mark would:
- Dilute the distinctive character of their FORD logo.
- Reduce their sales because their mark would be ‘tarnished’ due to the negative associations with the word ‘fraud’.
- Impact negatively on their image if Fraud Music’s goods were of poor quality.
- Make it easier for Fraud Music to sell their goods because of the link made with Ford’s trade marks, tailgating on Ford’s promotional efforts, power, reputation and prestige.
Ford was in the driving seat when it came to reputation and fi led evidence to show it had sold over 400,000 new vehicles in each of the five years preceding the date of Fraud Music’s application. Ford’s FIESTA model was the top selling car in the UK in 2012 and its FOCUS model was the third best selling car in the same year. Ford also sponsors a number of major sporting events in the UK including the UEFA Champion’s League (soccer) which, for its 2012 final, attracted over six million viewers in the UK alone and over 14 million viewers in 2006 when Manchester United played Chelsea. The hearing officer was persuaded by this evidence and concluded that a large proportion of the UK public know Ford’s oval trade mark.
Ford was in pole position but had to show a link between the trade marks, and the hearing officer acknowledged their established reputation, the striking similarities between the trade marks and, despite the goods being dissimilar (vehicles v clothing), the ultimate consumers are the same.
After a brief pit stop, the hearing officer considered detriment, and said that whilst Fraud Music’s goods themselves were not considered offensive, it was the unpleasant connotations of the word ‘fraud’ which made their wheels come off. Ford uses their FORD logo to communicate with consumers and an association with the word ‘fraud’ would be a ‘car crash’ for their brand.
Fraud Music did not comment on their choice of mark only to say that it is a ‘business word’ and could not explain why the get up so clearly mimicked Ford’s famous logo. The hearing officer found that there was nothing accidental with their choice of trade mark and it was their pure intention to bring Ford’s logo to mind and increase their own sales.
All the conditions for detriment had been met and Ford was shown a chequered fl ag: Fraud Music’s application was refused in its entirety.
A fine victory for Ford, despite the initial stall from the UKIPO. We believe that any appeal is unlikely to even reach starters orders.