07 August 2019

Reebok given a run for their money

When likelihood of confusion amongst consumers is the price you pay, not. Sportswear giant Reebok International Limited has lost its bid to stop an exercise equipment company from registering a trade mark.

In a recent decision the UK Intellectual Property Office (UKIPO) found there would be no consumer confusion between Reebok’s trade mark for its name and a trade mark applied for by Quanzhou Wanxiang Information & Technology Co, Ltd.

On 9th January 2018 Quanzhou Wanxiang Information & Technology Co, Ltd (Quanzhou) which makes high performance sports equipment particularly for Yoga and Pilates sought to register the mark REEHUT in class 28 for goods including sports equipment; Appliances for gymnastics; Exercise treadmills; Gym balls for Yoga; Yoga blocks; Yoga straps. The application under No.3281313 was published for opposition purposes in the Trade Marks Journal on 26th January 2018.

The REEHUT application was opposed by Reebok, which said it would infringe on its trade mark for its name.

Reebok International Limited (Reebok) opposed the trade mark on the basis of Section 5(2)(b) and 5(3) of the Trade Marks Act 1994 (the Act). The grounds of opposition under Section 5(2)(b) and 5(3) of the Act is on the basis of its earlier European Union (formerly European Community)Trade Mark Registered in 1998 under No. 000000373 REEBOK.

Under Section 5(2)(b), Reebok argued that the respective goods are identical or similar and that the marks are similar.

Under Section 5(3), Reebok argued that the applicant will benefit from Reebok’s investment in advertising, leading to advantage. Further that the applicant will ride on its coat tails and will benefit from the power of attraction, reputation and prestige of the earlier mark.

Reebok also claimed that the later use will be out of its control and that poor quality or offensive goods will cause detriment to its valuable reputation and business. It claimed that use of the later mark will dilute the distinctive character and reputation of its marks.

In its decision, the UKIPO said the earlier trade mark and applied-for mark visually coincide in the first three letters and are of identical length but differ in their final three letters. It said they are visually and aurally similar to a low degree.

The UKIPO said that while some of the goods covered by the earlier trade mark and applied-for mark are identical, the respective endings of the marks are clearly different.

Such a difference will not go unnoticed and so it is difficult to see how the later trade mark will be mistaken for the earlier one. The UKIPO said there is no likelihood of confusion, and additionally, it found it to be unlikely that a consumer would make a link between the earlier mark and the applied-for mark, but even if a link was made, “it would be so fleeting that it would have no consequence”.

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