Stirred by shaken
The HO was moved to find for the Opponent, explains Peter Collie
Bubbleshake Bar Ltd (the Applicant) applied to register a mark in relation to a range of milk drinks, confectionery goods and the provision of food and drink services.
Shaken Udder Ltd (the Opponent) opposed based on likelihood of confusion, reputation and passing off with its earlier SHAKEN UDDER mark. The earlier mark covered identical and similar goods to those in the application.
Confusion conclusion
The Hearing Officer (HO) held that the marks shared a low to medium degree of visual similarity, and a medium degree of aural and conceptual similarity.
The SHAKEN UDDER mark’s allusive qualities resulted in a low degree of inherent distinctiveness in relation to milk products. However, the Opponent demonstrated enhanced distinctiveness for milkshakes.
The HO concluded that the differences between the marks were sufficient to ensure no likelihood of direct confusion. However, he also concluded that the shared element SHAKEN is sufficiently distinctive to give rise to a risk of indirect confusion in relation to all the goods and services.
The HO highlighted the words “Shaken cow” in the Applicant’s mark, suggesting that this pointed to the likelihood of the same undertaking using more than one trade mark featuring the word “Shaken”. Ultimately, the likelihood of confusion claim succeeded in full.
Reputation response
The Opponent’s evidence for enhanced distinctiveness was also found to demonstrate a moderate reputation in relation to milkshakes.
On the basis that both marks begin with the word “Shaken” and the Opponent’s reputation is for goods in the same economic sector as the Applicant’s (food and drink), the HO concluded that the necessary link between the marks was established and there was potential for the Applicant to gain an unfair advantage.
The reputation claim, therefore, succeeded in full.
The passing off claim also succeeded in full. The Opponent’s evidence for enhanced distinctiveness demonstrated a fairly strong goodwill for the mark SHAKEN UDDER in relation to milkshakes.
The HO again emphasised the presence of “Shaken” in both marks and the overlapping market sectors, concluding that misrepresentation, and damage through the diversion of sales, was likely.
Broad interpretation
There were clear visual, aural and conceptual differences between the marks – for example, the contrasting concepts of “udder” and “bar”. However, the HO took a broad interpretation of conceptual similarity by referring generally to “something that has been ‘shaken’”.
The alignment of the marks’ conceptual meaning at a general level was sufficient to support the finding of indirect confusion, the necessary link for the reputation claim, as well as a finding of misrepresentation for the passing off claim.
It is difficult to avoid the conclusion, however, that the additional logo containing the words “Shaken cow” in the Applicant’s mark considerably aided the Opponent’s case for indirect confusion.
Key points
- Conceptual meaning within a mark, even at a very general level, can be a powerful tool for blocking third-party marks
- Evidence of enhanced distinctiveness to a level that is “higher than medium” may be sufficient to override relatively low inherent distinctiveness
