This piece was written by Hallam Whitehead, winner of the Virtuoso Legal prize for IP 2018, whilst on work placement at Virtuoso Legal - and was edited by Martin Hendry

Introduction: The Task at Hand

Beginning my placement at Virtuoso Legal I approached my first day with the level of knowledge of a typical law graduate in terms of registering a trademark, having studied them at the outset of my third year. Tasked with conducting a clearance search for a word mark of a prospective client, I was given access to a database in which to run the search and quickly set about looking for identical and similar marks which could pose opposition.

I was aware of the clearance search process prior to beginning and I also knew that it is not uncommon for companies to carry out the process independently, often through the search tool on the government website. However, whilst making a search of my own, I found the process to be complex far beyond what I had expected.

All Too Familiar: Similarity in Trade Marks

In terms of running a search independently and without legal counsel, as I have mentioned it is not uncommon for companies to run clearance searches through the internet on their own esteem. It is also true that this cost cutting method is not entirely unsuccessful and certainly can be useful in identifying identical marks, in particular.

However, to suggest such a method is comprehensive would be naïve, perhaps best evidenced by the much publicised debacle the Government of the Yukon faced when they launched a promotion campaign for tourism in 2015. The campaign invested heavily in television advertisement, spearheaded by the slogan “We’ll leave a light on for you”, a nod to the famous Northern Lights which draw thousands to the Yukon every year. Nevertheless, soon after the campaign was first aired, viewers took to social media in a state of confusion at the apparent parallels between this and another slogan used by the Motel 6 chain of hotels; “We’ll leave the light on for you”.

Consequently, at great cost and embarrassment, the campaign was rebranded with the slogan; “Come to my Yukon – We’ll light the way.” The point in case is clear and also illustrates that such errors can be made on a national scale if due diligence is not sufficient. Even the most minor differences in wording, in this case the difference between a and the, will not necessarily be filtered in a basic search – even where they offer no change in meaning or sound. Crucially, such mistakes from such subtle differences are made by established entities and can come at great cost.

Getting Classy: Registering in the right Classifications

When registering a prospective mark at the EUIPO, the Nice classification system is implemented to identify and categorize the goods or services for which the mark is being registered. The classification assigns goods under classes 1-34 and services in classes 35-45, each class gives a heading and some information about the goods or services it covers.

Before filing an application, it must be specified which classes the mark is being registered for, to protect the goods and services to be covered by the mark. At the time of filing any number of classes may be specified, however only one class is covered by the application fee, and a fee is payable for each additional one.

In the process of conducting a clearance search myself, I was running a search with three classes in which the client sought to register their mark. The advice given with the findings of this search would be based on what classes were under threat by other similar marks within the same classes, which could then pose credible opposition.

Moving forward, it might be that goods under one or more classes may require rebranding to avoid infringing any pre-existing marks. In this situation and within the process of registering marks within the Nice classes is where some ill-advised individuals seek to cut corners, which can prove costly in future. For example, it is a common mistake to only register a mark in one or a couple of classes, only to then find that an identical mark has been registered in numerous other classes in the future.

Subsequently a brand looking to expand into other goods/services in the future may face a predicament in which they may have to rebrand entirely, or risk diluting their rights through negotiation with the opposition. A brand is built on its reputation as customers come to recognise its product and its identity, therefore being unable to grow without a change of mark can be a major setback in the infancy of a brand. It is important to recognise that having a mark registered under one class does not offer a monopoly on all goods and services.

Therefore, businesses need to think strategically through the course their trade mark registration processes to make sure that not only their primary product/service offering is covered off – but also the peripheral categories of goods and services they may move into.

Dazed and Confused: The Bigger Picture

The general principle underpinning relative grounds for refusal is that a mark shall not be registered where it is identical to another pre-existing trademark, and where the goods/services for which the mark is registered are also the same. However rarely is anything so cut and dried. Where the circumstances of an opposition are not so exact, the grounds for refusal are balanced against the notion of confusion – that is, would the registration of a mark likely cause confusion with a pre-existing trademark among the public.

Conceptually this would appear straightforward. However when the stakes are so high, nothing is left out of consideration and the courts are meticulous in the extreme when processing an application. What is often overlooked from the layman’s perspective is the power possessed by the global companies, and the importance placed on the reputation and distinction of a pre-existing mark.

This is perfectly demonstrated by the aggressive strategy of Sky UK who are renowned for the frequency of their opposition to any marks relating even narrowly to their own, to the extent that it could almost be said that Sky wield a monopoly on the word. As a result of their reputable brand, many strong applications have been rejected on the basis of opposition from Sky where it would initially appear that they have a strong case.

Aldi discovered as much when they tried to register Skyline as an EU trademark in 2013 for laptop and travelling bags in classes 9 and 18. This was opposed by Sky on the basis of their numerous Sky trademarks registered in the EU. Particularly “Sky” as a word mark registered in relation to consumer electronic devices and leather goods. Aldi sought to submit arguments that Sky were required to provide evidence of use within the relevant classes, however the request was rejected by both the EUIPO and the the Board of Appeal in the EU General Court. This was immensely exorbitant for Aldi, who were ordered to pay all costs for the proceedings, an expensive bill for four years of Court action.

Microsoft have consistently faced similar opposition from Sky over the registration of the mark Skype. Having successfully overcome opposition from Sky in Switzerland, Turkey and Brazil, Microsoft were unable to convince the General Court of the EU that there was no likelihood of confusion among consumers due to the similarities of the marks and the Court ruled that Sky’s successful challenge should be upheld. This is not the first encounter between Sky and Microsoft, previously Sky lodged a successful opposition to the trademark Microsoft wished to register for their cloud service – Skydrive. Following a High Court ruling in favour of Sky UK, Microsoft was forced to rebrand its cloud service as Onedrive.

Skype have continued to argue that allowing the opposition to succeed relies on artificially dissecting the word Skype into “Sky” and “pe”, however the Courts have ruled that the strength of the Sky brand in the UK is such that the average person looking at the mark Skype would wrongly associate it with Sky. The decision is illustrative of the need to assess all elements of branding and illustrates the swaying influence that reputable marks can have. It also demonstrates that utilising figurative elements within a mark is not a sure way of avoiding issues and allaying confusion. Regarding Skype in particular, it is noteworthy that the distinction of Skype as a brand does not surpass the distinctiveness of Sky as a brand, in the process and consideration of the Courts.

What is apparent is that the weighing of what will cause confusion is not easy to predict and the strength of a brand can destabilise the playing field in terms of opposing registration, where the corporate giants are concerned. The measures such companies will undertake to protect their brands can be aggressive and resounding. In these situations the right expertise and guidance could be invaluable for a business looking to carve an identity of its own.

So even for those who understand the process of clearance searches, are able to deal with complex concepts relating to similarity and classifications – there remains risk unless the registrant is fully cognisant to the broader climate of litigation and the magnitude (and subsequent veracity) of prospective litigants. Simply put, it’s a minefield for the uninitiated.

Registering a Trade Mark: Getting it right

Through the process of completing this exercise with the team at Virtuoso Legal I came away with a renewed appreciation of the fact that registering a trade mark is a fine art. Mistakes can be made, and they can be significant or less so – but each make an impact on how a business can operate and grow.

Even as someone versed in the law and familiar with trademarks I was surprised by the grey areas and pitfalls that I was unaware of… I have come to further appreciate the value in good representation.”

I have also come to appreciate the dynamic nature of trademarks and the complexity of the process behind registration, due to an ever changing landscape it is a discipline that requires constant attention and care in order to maintain control and harness progress. In some ways engaging the right expertise can be an insurance policy, which is particularly relevant considering the potentially turbulent times ahead as the law adapts to changes in Europe and wider jurisdictions.

Ultimately, registering a trademark is a business critical decision and as such, a cost-conscious approach may – all too often – lead to loss of business far outweighing the extra cost at the point of registration.

Even as someone versed in the law and familiar with trademarks I was surprised by the grey areas and pitfalls that I was unaware of, it is certainly not an exact science and where the margins can be so tight I have come to further appreciate the value in good representation.

I am reminded of the proverb ‘failure to prepare is preparation to fail’. When laying the foundations for a brand, the groundwork at its infancy is crucial to protecting its potential longevity, and where the consequences can be so damaging – why take the risk?