Trade Mark update in a Samson-v-Goliath case
The Intellectual Property Office recently held that a former student of the University of Law now operating a business providing educational support services for law students is allowed to register a trademark for “Unilaw” despite The University of Law opposed the application on the grounds that the mark was too similar to their “ULAW” mark and that his would result in confusion for consumers.
Under the Trade Marks Act 1994, the owner of a current trademark can oppose the registration of a new mark if it can be shown that (1) the trademark to be registered is identical or similar to one already in existence and is to be used in relation to the same or similar goods and services and a likelihood of confusion on the part of the public exists as a result; (2) the trademark to be registered is identical or similar to one already in existence and to allow the new trademark to be registered would result in some detriment to distinctive character or reputation of the existing mark.
In this case, the Intellectual Property Office determined that whilst there was some similarity between the marks, the similarity was minor and concluded that there was no likelihood that a consumer would be directly or indirectly confused into believing that the goods applied for and provided by Unilaw are those of the University of Law or by an undertaking linked to it.
In another blow to the University of Law, the Intellectual Property Office decided that it had not established that it has a reputation in the mark “ULAW” for a set of goods and/or services.
The case highlights that even where the two businesses appear to be operated in the same sector, a trademark application will not automatically be rejected just because it shares some similarities with an existing registered mark and an applicant should look carefully at the differences between the goods and services provided and whether the holder of the other trademark is likely to be able to establish a reputation associated with their mark. This is even the case where you are dealing with an established and professional organisation as a potential opponent.