The dangers of trade mark copycats

Boon’s application was made on 28 October 2020 for the mark below on the left. The mark was applied for in relation to class 32 goods, being among other things for beer, aerated water and non-alcoholic beverages. Unfortunately for Boon, the application was opposed by Jinshan Food Co Ltd, who relied upon their earlier mark registered on 21 August 2020, below on the right, again, registered in class 32, covering beer, mineral water and other related goods.

Image of the logos sourced from the IPO website.

You may not be the only one to think there is an uncanny resemblance between the two marks. If you have a minute or two, it might be fun to play a game of spot the difference.

On receipt of Jinshan’s opposition, Boon challenged it and applied to invalidate Jinshan’s mark on several grounds. Boon relied upon several of their marks to show similarity between Jinshan’s mark and Boon’s even earlier marks. Moreover, Boon submitted that its mark has a reputation within the UK, that it was entitled to prevent Jinshan’s mark under the law of passing off, and that Jinshan’s mark was registered in bad faith.

The IPO first determined the grounds of invalidation under section 5(2)(b) of the Trade Marks Act 1994. In short, the likelihood of confusion must be appreciated globally, through the eyes of the average consumer, who perceives the mark as a whole. After reviewing the evidence of use within the UK, the IPO had no trouble finding that Boon’s earlier marks had a reputation and enhanced distinctive character. Furthermore, the IPO was clear that a likelihood of confusion arose between the marks, particularly in reference to class 32 goods (beer etc.). Boon’s claim as to detriment and unfair advantage also succeeded.

The IPO’s consideration of Boon’s bad faith submission is short. Jinshan offered no defence specifically to the bad faith argument, other than a blanket denial. It did not explain why the marks were strikingly similar (if not identical), nor justified the registration of the mark. The foreseeable conclusion was that Jinshan were aware of Boon’s marks and reputation, and applied for the mark in bad faith. The IPO decided as such.

Trade mark copycat ruling

Boon were therefore successful in full and Jinshan’s mark was deemed to never have been registered. Boon’s application for the SINGHA LION mark was therefore successful and continues to be registered at the time of writing.

Although Boon’s success is welcome and provides a deterrent to those that would take advantage of well-known (unregistered) marks, it also shows the importance of maintaining efficient trade mark portfolio management. Boon was awarded £2,500 by the IPO, but this will only be a fraction of Boon’s costs associated with defending against Jinshan’s opposition and Boon’s own invalidation action. It is unclear whether Boon had procured watch services, or whether they were aware of Jinshan’s mark before the opposition. An educated guess would be no, as Boon would likely have taken swift action if they were aware of Jinshan’s mark.

Ultimately, the case offers another stark warning to brands that watch services, although potentially costly to set up, are a necessary part of protecting, enforcing and maintaining a trade mark portfolio. It is better to spend up front to avoid lengthy proceedings later on down the line.

How can we help?

Blake Morgan LLP have a wide range of experience in setting up, maintaining and review watch services and notifications. Please contact any member of the Intellectual Property team to discuss how we can assist you in the protection of your trade marks.