A UKIPO opposition was brought by the owner of the famous auction website, eBay Inc., against an application by the games company SC Zumedia Games SRL to register the above left figurative trade mark (application no. 3224667). eBay relied on two earlier registered UK word marks for EBAY in Classes 35, 38 and 41 and the above right figurative EU trade marks (in various classes).
eBay claimed (1) the similarities between the marks would give rise to a likelihood of confusion and likelihood of association; (2) the applicant would be taking unfair advantage of eBay's reputation in the earlier marks; and (3) the use of the mark applied for would mislead the relevant public and result in damage to eBay's goodwill (a passing off claim).
The Hearing Officer noted that the focus of eBay's claim is on the relevant public recognising the BAY element of the marks and believing that the contested mark is a variation or brand extension of eBay's marks. Her judgment focused on the average consumer and if they would be likely to confuse the trade marks. She held that in most cases this would be unlikely.
The classes under the application were Class 35 for advertising, business management, business administration and office functions and Class 38 for telecommunications. The Hearing Officer considered the evidence put forward by eBay and accepted that eBay is known to operate a very successful online platform that enables users to post advertisements and in doing so, eBay can be described as a classified advertising service. However, she did not consider that eBay provides business management and administration services or telecommunications services.
She concluded that eBay could rely on its earlier right for the BAY mark in relation to identical advertising services in Class 35. In this class, she considered that there is a likelihood of confusion as consumers are likely to believe the two marks are variant marks used by the same or economically connected undertakings. However she rejected eBay's claims in relation to all other classes and found that there was no likelihood of confusion between those other marks and the one applied for.
The Hearing Officer also agreed with the risk that use of the applied for mark could take advantage of the reputation of the earlier marks in respect of advertising services. However she was not persuaded that there is such a risk in relation to other services in the application. She also rejected eBay's claim based on damage to distinctive character of its earlier marks. Therefore, eBay was successful only as regards unfair advantage directed against advertising services.
In terms of passing off, whilst the Hearing Officer accepted that eBay has a protectable goodwill, she was satisfied that there is no likelihood that a substantial number of eBay's customers would be misrepresented. Therefore the passing off claim was dismissed.
The application was therefore granted with an amended specification for the following services only:
- Class 35 for business management, business administration, office functions; and
- Class 38 for telecommunications.
Case ref: 0736/18 Daniel Foley
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