Amazon successfully opposes ‘Firefly’ mark at UKIPO
Retailer Amazon has succeeded in its opposition of the registration of trademark ‘Firefly’ at the UK Intellectual Property Office (IPO).
The IPO delivered its decision on Thursday, March 2, finding that the ‘Firefly’ mark and its services are identical to earlier mark.
In December 2016, Firefly International applied to register the mark ‘Firefly’ in classes 3, 26, and 38, covering goods such as cosmetics and sewing materials and services such as telecoms and data. Class 26 was removed from the application in unrelated opposition proceedings.
Subsequently, Amazon filed an opposition application in respect of class 38, on the basis of previously registered marks, and the retailer’s subsidiary Amazon Technologies did the same.
In the first opposition, Amazon relied on its earlier registered mark ‘Amazon Firefly (European trademark number 013,010,426). The second opposition, by Amazon Technologies, was based on Amazon Technologies’ trademark ‘Firefly’ (European trademark number 013,301,742).
Both marks cover class 38 for services including telecoms and broadcasting. Amazon claimed ‘Firefly’ was similar to its own mark and covered similar services, and Amazon Technologies argued that the applied-for mark was identical to its earlier registered mark and covered identical services.
In a statement relating to the second opposition, Firefly accepted that its mark was identical to Amazon Technologies’ earlier registered mark, according to the IPO.
However, Firefly claimed that the services of telecoms are broad and, while the applied-for mark covers similar services to that of Amazon Technologies’ mark, simply sharing the telecoms category is not sufficient to render the services identical.
The IPO said that all services covered by the applied-for mark, including communication services, data transmission, telecoms access, and satellite communication services, were identical to that of the services covered by Amazon Technologies’ mark.
As Firefly’s mark and the services covered by it were identical to Amazon Technologies’ earlier registered ’Firefly’, the IPO upheld the opposition. It also found that it was not necessary to consider Amazon’s first opposition.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today’s top stories
Nine charged with $3.4bn of IP theft from international establishments
Kim Kardashian West and Urban Outfitters settle ‘selfie’ patent suit
