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Case law: Trade mark objection less likely to be successful if consumer likely to pay 'heightened attention' when buying the relevant goods or services

Trade mark owners planning to object to another trader's application to register an identical or similar trade mark should take into account whether the relevant goods or services are such that a consumer would pay 'heightened attention' when buying them, as this can reduce the likelihood of a successful objection.

October 2018

This update was published in Legal Alert - October 2018

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

A solicitor whose work included advising on intellectual property issues applied to register the trade mark 'Pure Business Law', together with the slogan 'Giving You The Edge' at the UK Intellectual Property Office (IPO).

A firm offering intellectual property services objected to her application on grounds it would infringe its UK registered trade mark 'Pure Ideas', as the services the two businesses provided were so similar that the average consumer would be confused.

The IPO adjudicator ruled in favour of the solicitor. The two marks were not particularly similar either visually (only similar to a low degree), orally (only similar to a medium degree) or conceptually (only similar to the extent that both inferred specialisation and/or expertise). The adjudicator also took into account that a consumer would be likely to pay a 'heightened degree of attention' when choosing a legal adviser to provide them with legal services, as this was such an important decision, and their investigations would make it clear that the two were unrelated businesses despite both using the word 'pure'.

Operative date

  • Now

Recommendation

  • Trade mark owners planning to object to another trader's application to register an identical or similar trade mark should take into account whether their goods or services are such that a consumer would pay 'heightened attention' when buying them, as this can reduce the likelihood of a successful objection

Case law: In the matter of application no. 3216670 by Eve Jarrett, O-470-18

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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