Defeat before OHIM no laughing matter for Dave TV

Author: Suzy Schmitz (Kemp Little)

UK Gold Services Ltd v Dave Soho Ltd, OHIM Opposition Division, Case B-1294448, 24 January 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr068, first published online: 16 May 2011

The UK's Dave TV station may need to think creatively about its brand, following OHIM's decision to reject its trade mark application for its key services on the grounds of earlier unregistered rights.

Legal context

Under Article 8(4) of the Community Trade Mark Regulation, a trade mark opposition can be brought before OHIM based on unregistered rights as well as registered ones. More specifically, a party can rely upon an earlier non-registered trade mark of ‘more than mere local significance’, where local laws confer on the owner the right to prohibit the use of a subsequent trade mark.

This case illustrates OHIM's application of the UK law of passing off, the local law which applied in this case given that the parties were UK entities, resulting in a refusal of Dave TV's application for most of its classes of goods and services. In principle, this leads Dave TV facing a rebrand, if not an action for past infringement. However, OHIM's analysis of the ‘classic trinity’ required for passing off is unlikely to survive close scrutiny, so it is reasonable to expect that Dave TV will appeal the decision and that this will not be the end of the proceedings.

Facts

UK Gold Limited, operator of the ‘Dave’ comedy TV channel, applied to register the word mark DAVE as a Community trade mark (CTM) for goods and services in classes 9, 16, 28, 35, 38, and 41. Of these, classes 38 and 41 would appear to be the most crucial for UK Gold's business, given they include ‘broadcasting’ and ‘organization, production, presentation, distribution, syndication, and rental of television programmes’. The filing date of the application was 18 July 2007.

UK Gold's application was opposed by another UK company, Dave Soho Limited, which argued that they held unregistered rights in the UK in relation to classes 9, 16, 35, 38, 41, and 42; Dave Soho did not hold any earlier registered rights for the mark on which to rely. They argued, however, that their earlier unregistered rights were of ‘more than mere local significance’ in the UK, ie they provided the basis for a passing off action, and that they could rely on them for the purpose of Article 8(4). By way of background, Dave Soho is a creative business consultancy involved in advertising, marketing, and communications. The company was incorporated under its current name in 2004 and adduced a variety of evidence to demonstrate that its use preceded UK Gold's application, and was sufficient to establish a case in passing off.

OHIM examined the case first by considering whether Dave Soho's use of the mark DAVE amounted to ‘prior use in the course of trade of a trade mark of more than mere local significance’. To do so it examined the detailed evidence put forward on the opponent's behalf, including history of trading under the name, ownership of URLs containing the mark, annual returns, receipt of industry awards, and examples of client accounts, including Nokia. OHIM explained that its assessment must take into account a number of factors including the territory in which the mark is used, the length of time and economic dimension of use, the relevant consumers, and the extent of advertising of the sign.

Having taken all this into account, OHIM was prepared to find that Dave Soho had used the DAVE mark in relation to goods and services in all of its pleaded classes. It was particularly convinced that the mark had ‘more than local significance’ by the receipt of awards from foreign entities.

OHIM then proceeded to examine Dave Soho's opposition under the UK law of passing off. After accepting that the law in this area is ‘complex’, OHIM summarized the three elements which need to be established. These are (a) that the opponents’ goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature, (b) there is a misrepresentation by the applicant, and (c) the misrepresentation causes damage to the opponent (or is likely to).

Having outlined the points it needed to address, OHIM wasted no time in dealing with them. In considering the first limb, it found that the opponent had goodwill in the UK as a result of the ‘significant commercial volume of use’ as well as the fact that the use was continuous and frequent. In respect of misrepresentation, OHIM examined each of the classes of goods and services (concluding most were identical or similar), and then compared the marks side by side and concluded they were identical. Having carried out these two assessments, OHIM decided that the public would be led to believe that the goods of the applicant originate from the opponent, concluding that a misrepresentation was being made. Its conclusion on damage was equally as affirmative and swift.

Analysis

Oppositions under Article 8(4) of the Community Trade Mark Regulation are relatively infrequent, so it is interesting to see how OHIM applied the UK law of passing off to this case. However, OHIM's approach when assessing whether a misrepresentation had occurred was reminiscent of the way in which it would assess whether a sign is confusingly similar to a registered trade mark, rather than resembling the approach one would expect for passing off. In particular, it did not explore the concept of deception, an important element of a passing off action, and whether Dave TV's use would have this effect on consumers. This leaves an avenue for appeal open for Dave TV.

Practical significance

Given the substantial impact which this decision could have on Dave TV's operations, with the potential need for a full rebrand and the risk of infringement proceedings, it is likely they will be considering all avenues for appeal. OHIM's questionable approach to the law of passing off might provide them with the answer they need. More generally, the case shows that, if a party wishes to bring an opposition under Article 8(4) of the Community Trade Mark Regulation, it is advisable to produce comprehensive evidence of its trading history, which might include sample clients and even industry awards. Ideally, this evidence should span a number of years and be generated from a variety of sources.