Nike Inc. has recently succeeded in its opposition to a trade mark application for the word “Converse” which was made by a tyre company in relation to tyres and associated retail services.
All Star C.V., a subsidiary of Nike Inc., owns a UK trade mark for ‘CONVERSE’, which was registered in February 1968. All Star has a significant global reputation for its Converse shoes, though its registration is limited to only class 25 and includes a variety of clothing and footwear. However, due to its significant reputation in its ‘CONVERSE’ mark, it is possible for the brand to enjoy enhanced protection in that it can object to the registration of an identical or similar mark, even if the goods and services for which it is registered are not similar.
This applies where, despite the fact that the goods and services are seemingly unrelated, there is still a likelihood that the use of an identical/similar mark would: 1) take advantage of the brand’s reputation and 2) be detrimental to the distinctive character of the trade mark in question.
In this case, the UKIPO had to decide whether consumers would associate the All Stars brand with the tyre company, if there is a likelihood of such “link”, there is not necessarily a need for confusion. It was found that due to the brand’s reputation, the tyre company’s use of the word ‘Converse’ would take an unfair advantage of All Stars’s distinctive ‘Converse’ brand, despite the fact it was to be used in a completely different market. Another factor which supported Nike’s argument was the fact that tyre companies have often sold clothing and footwear featuring their brand, and in fact All Star used to sell tyres (under the name Converse Rubber Company) before entering the market for shoes and other apparel.
The tribunal’s decision highlights the power of reputation in trade mark proceedings and acts a reminder that where a trade mark owner has a significant reputation in a particular mark, their rights may not be limited to only the goods and services for which the particular mark is registered.
If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
