In June 2010, the UK Intellectual Property Office (UK IPO) issued its decision in FreemantleMedia Ltd and 19 TV Ltd v James Fleming BL O 205 10. Freemantle and 19 TV (collectively the Opponent) filed an opposition against the sign MODEL IDOL in Class 35 for "Advertising, organising, operating and supervising loyalty and incentive schemes, advertising services provided on the Internet, producing television and radio adverts, trade fairs, opinion polling, data processing." The Opposition was based on three trade mark registrations for POP IDOL, word marks and figurative mark, in various Classes (including Class 35). The grounds of opposition were as follows:

  • That MODEL IDOL was similar to POP IDOL and had been filed in respect of identical or similar services which leads to a likelihood of confusion (Section 5(2)(b)). 
  • That MODEL IDOL was similar to the earlier marks for POP IDOL and that those earlier marks had a reputation which MODEL IDOL will take unfair advantage of, or cause detriment or damage to (Section 5(3)) 
  • That MODEL IDOL is passing off as POP IDOL (Section 5(4)(a)).

DECISION

When considering the Section 5(2) grounds, the Hearing Officer took into account the evidence of reputation filed by the Opponent. He acknowledged the enhanced reputation of the Opponent’s marks but also balanced this with the cease of use three years prior to the date of the MODEL IDOL application. The sign MODEL IDOL was found to be similar to the POP IDOL marks and the term "advertising" was identical to the "advertising services" of the POP IDOL registration. Hence a likelihood of confusion was found on the part of the relevant public in respect of these services.

In terms of passing off, the Hearing Officer found that any reputation or goodwill of the Opponent’s mark—POP IDOL— related only to television programmes and found no similarity with the services in the MODEL IDOL application. There was no misrepresentation on the part of the Applicant in connection with the Opponent’s goodwill. As such, this claim failed.

The Section 5(3) part of the decision was more revealing showing the application of recent principles from case law.

REPUTATION

Reputation, for the purposes of Section 5(3), means that the mark is known by a significant part of the public concerned with the products or services covered by that mark (General Motors v Yplon SA [2000] RPC 572). In particular, the market share held by the mark, the intensity, geographical extent, duration of use and the level of promotion undertaken must be considered.

The Opponent had produced ample evidence of the success of their POP IDOL programme in 2001, 2002 and 2003. However, there was no evidence in respect of the three year period before the relevant date of 17 May 2006. The Hearing Officer considered that the reputation must have waned to a certain degree, but accepted that the repute of the programme would have remained in the minds of the relevant consumer at the time of filing of the MODEL IDOL application.

Again, such reputation was in respect of the Class 41 specification for "television entertainment services in the nature of competitions in the field of popular music".

THE LINK

It is then necessary to have a link between the POP IDOL mark (with reputation) and the sign MODEL IDOL. It is enough for the sign to simply call to mind the earlier mark for there to be the necessary link (Intel Corporation Inc v CPM United Kingdom Ltd [2009] RPC 15).

Despite the only moderate level of similarity between the marks, and that the Opponent’s services—"television services"—and the Applicant’s Class 35 services were dissimilar, the Hearing Officer found that the Opponent has significant reputation such as to overcome the lack of similarity and the relevant consumer would make a link between the sign MODEL IDOL and the Opponent's marks, POP IDOL.

DAMAGE

Having established a link, damage is required for a Section 5(3) claim to succeed. There are three heads of damage: detriment to distinctive character, detriment to repute, and unfair advantage of the distinctive character or repute. The Opponent claimed detriment to repute and unfair advantage.

The reputation of POP IDOL was said to be in respect of a specific television programme and that such reputation has waned. The Applicant’s services were considered dissimilar to the Opponent’s "television services" and the marks were said to have only a moderate level of similarity. Therefore it was held that MODEL IDOL would not cause any detriment to the reputation of POP IDOL.

As for whether the sign MODEL IDOL was free riding upon the reputation of the POP IDOL mark, the Hearing Officer noted that in Intel it had been established that, if an earlier mark has a reputation for certain specific services but those services are dissimilar to those of the later mark, and the later mark calls to mind the earlier mark, that is not sufficient to establish that the use of the later mark takes, or would take, unfair advantage of the repute of the earlier mark. Further, it had also been established in L'Oréal SA v Bellure NV C-487/07 that taking unfair advantage of the repute of a mark relates not to detriment caused to the earlier mark but to the advantage taken by the third party. Such an advantage may, the Hearing Officer observed, be unfair even where the use is not detrimental to the repute of the mark.

The Hearing Officer found that the reputation of the POP IDOL mark is significant but not as extensive as the Opponent claimed, due to the three year gap between the last broadcast of the programme and the relevant date. As there was dissimilarity of the services and only moderate level of similarity between the marks, there was no evidence of any advantage, let alone any unfair advantage.

 In conclusion, the opposition succeeded in respect of the Section 5(2) claim, but only in respect of "advertising services". The opposition failed on the other claims.