19 October 2018

Flip-Flops Up a Gumtree - Declaration of Invalidity denied

Gumtree.com (“Gumtree”) is a familiar British on-line classified advertisement and community website and has been around for almost 19 years.

Last week the UK Intellectual Property Office (“UKIPO”) gave its decision on an invalidation action brought by Gumtree to invalidate Michel Maurer’s (“the Proprietor”) Trade Mark registration of GUMTREE.

In December 2015, the Proprietor filed an application to register the trade mark GUMTREE for goods in Classes 18, 25, and 28, ranging from luggage, clothing, footwear, sports equipment and accessories. The mark achieved registration in 2016 under No.3142026.

In August 2017, Gumtree filed invalidity action against the Proprietor’s registration on the grounds they own an EU trade mark for GUMTREE registered in 2005. This registration in classes 35, 39 and 43 includes services such as business information services provided on-line from a database or the Internet; Travel services; travel arrangement services; transport services and Temporary accommodation; home-sharing services; flat-sharing services and ultimately relied on the services in class 35 in its invalidity action. The earlier GUMTREE mark has been in use since 2000.

Gumtree claimed the GUMTREE trade marks are identical and cover similar goods and services, and that there is a likelihood of confusion between them. Gumtree stated further the Proprietor’s use of the mark takes unfair advantage of its earlier registered rights by free-riding on its reputation and illegitimately benefitting from its marketing efforts.

Gumtree also claimed that there would be dilution of the distinctive character of its earlier mark because the presence on the market of an identical mark would reduce the capacity of the Earlier Trade Mark to arouse an immediate association with the Invalidity Proprietor’s services and thus dilute its value and reputation.

The Proprietor’s response was the earlier registered GUMTREE mark does not have a reputation in the UK and denied that the services covered by the marks are similar.

The Proprietor also denied that the earlier mark has a reputation in the UK and that there would be detriment or damage of any kind to the earlier mark. The claim that the Proprietor has goodwill is denied.

The Proprietor stated that he uses the GUMTREE mark mostly in relation to flip-flops under the GUMBIES brand. He stated he had been selling Gumbies flip-flops since 1993 in Australia and in 2006, he created Gumbies in the UK, and now sells Gumbies branded flip-flops.

His explanation for using the mark is that the Gumtree is a tree which forms an integral part of the Australian landscape and therefore it was natural for him to use this name as a brand given he was living in Australia and wanted to use the GUM word.

The UKIPO accepted that Gumtree’s earlier registered mark has been used in relation to the Class 35 services it covers, and also that it has a strong reputation and a high level of distinctiveness.

However, the UKIPO found that there is no similarity between any of the goods covered by the Proprietor’s mark and the services falling within class 35 of Gumtree’s mark.

The UKIPO stated that the nature of advertising services is different to that of leather bags, clothing, and sports goods. It added further that the method of use will also be different, and confirmed that the Proprietor’s goods are not in competition with the services of Gumtree.

The UKIPO concluded there is no likelihood of direct or indirect confusion between the marks and awarded costs to the Proprietor.

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