Australian brand ‘Donut King’ has failed in a trade mark opposition at the UK Intellectual Property Office (UKIPO) against a logo for the words ‘donut king’ applied for by Serge Davis in respect of vaping goods and services. The decision is a good example of the limits of trade mark protection and also of the relatively high level of evidence required if you intend to claim a reputation in a trade mark.
Donut King filed the opposition based on their international trade mark which had a UK date of protection from November 2015. This mark was protected in class 29 for milk related products, class 30 for donuts, ice cream and beverages and class 43 for restaurant services. Mr Davis’s mark was applied for in class 34 which included electronic cigarettes. The opposition was based on three grounds. These were that there was a likelihood of confusion as there was similarity between the classes of goods and services that each mark protected, that Mr Davis’s mark took unfair advantage of Donut King’s reputation in its mark and a claim for passing off (that Donut King has goodwill in its mark). All of these claims were rejected.
In respect of the first claim the UKIPO decided that there was no likelihood of confusion. Donut King’s evidence was that the goods were complementary and shared the same trade channels. This was based largely on the fact that they provided evidence of a small number (four) of vaping shops in the UK which also had cafes. The UKIPO felt that such a small number did not support the claim and that to the contrary vaping products were generally bought for specialist shops whereas Donut King products could be purchased from bakeries, cafes and restaurants. The goods were unlikely to be sold in proximity to each other and so there was no likelihood of confusion despite the similarity of the signs.
In respect of the claims that Donut King had a reputation in the mark and also goodwill in the mark the UKIPO found that this reputation was primarily based in Australia with only minimal exposure in the UK. The UKIPO said that if there has only been a short period of use of a mark in the market then there will need to be high levels of turnover and/or marketing and exposure to support a claim to reputation. Donut King could not show these and so the claims in respect of its reputation and goodwill failed.
This case demonstrates that similarity between marks is not enough to succeed in an opposition and that a trade mark generally gives protection only against goods or services which are similar to those for which the trade mark is registered. It also demonstrates the extensive evidence needed if you want to seek to enforce your mark against applications whose goods or services are not similar, based on your reputation in your mark.
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