National Trade Marks or Community Trade Marks - Which is Safest/Easier to Enforce?

The Ukelele Orchestra of Great Britain ("UOGB") was recently unsuccessful in an attempt to sue a competitor, the United Kingdom Ukelele Orchestra ("UKUO"), for Community Trade Mark ("CTM") infringement.

Background

UOGB had a registered CTM in respect of its name and had built up a reputation in the UK and Germany comprising, in addition to its music, eccentric dress and joke-telling as part of the performance. The band are reported to have earned 'millions in a 30-year career'.

It had come to light that there were reports of mistaken ticket purchases and confused fans who had purchased tickets to UKUO shows believing them to be tickets to see UOGB.  It was for this reason UOGB brought an action for CTM infringement against UKUO.

UKUO brought a counter claim for invalidity of the CTM on the grounds of it being descriptive.  Ultimately the case turned on the question of acquired distinctiveness.

Acquired Distinctiveness

UOGB maintained that its name had acquired distinctiveness.  In order for the name to have acquired distinctiveness it must be so in the relevant part of the EU which, for English word marks, encompasses all English speaking countries and other countries where basic English is understood. It is a high threshold.

UOGB could only demonstrate its acquired distinctiveness in the UK and Germany and so failed in this regard and the CTM was held to be invalid.

Passing Off

Luckily for UOGB, in the claim lawyers for UOGB had included a claim for passing off.  This was very fortunate for UOGB as it was successful in this aspect of their claim. An important element of passing off is evidence of confusion, and this was provided in respect of a number of countries including the UK.

Points of Note

This case is a good example of the risks of bringing proceedings based on a CTM of relatively low distinctiveness.  If a mark's distinctiveness is challenged the threshold for acquired distinctiveness is high, particularly in the case of an English word mark. If UOGB had relied on a UK national trade mark, the test for distinctiveness would have been limited to the UK - a decidedly lower threshold - and would not have had to prove acquired distinctiveness in numerous countries throughout the EU.

Companies and organisations should always be very careful as to how they protect their IP rights in the first instance and ensure that if they do decide to bring legal action they take the best legal advice they can.  In this instance the fact UOGB's solicitors thought to include a claim for passing off saved the day.

At McDaniel & Co we are specialists in dealing with all intellectual property matters and can advise you both on the steps you should take to protect your intellectual property and enforcing those rights in the event that they are infringed.  Please feel free to contact us on 0191 281 4000 or by email at legal@mcdanielslaw.com for information on how we may help.