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11 May 2018Trademarks

Energizer victorious in electric fence TM opposition

Battery maker Energizer Brands has successfully opposed a UK trademark application for ‘IP Energizer’.

The UK Intellectual Property Office (IPO) handed down its decision backing Energizer’s opposition against the mark—which was applied for by Australia-based Pakton Developments—on Wednesday, May 9.

In June 2016, electric fence maker Pakton applied for the trademark ‘IP Energizer’ in the UK for an electric fence energiser (in class 9).

Energizer opposed the trademark application in February 2017 based on six of its earlier trademarks, including the mark ‘Energizer’ (EU trademark number 7,339,261), which covers class 9.

Based on these earlier trademarks, Energizer argued that it already has a reputation in the UK and that the relevant public recognises its marks.

Energizer said the applied-for trademark would “lead consumers into believing that the mark is an addition to the opponent’s family of marks or that there is an economic connection between the parties”.

In May last year, Pakton filed a counterstatement, claiming that the trademarks are in different industries so there wouldn’t be a risk of confusion between them.

Paul Thompson, director of Pakton, argued that the term ‘energiser’ refers to an electronic device used to generate the electrical ‘pulse’ for an electric fence.

He said that the term ‘energiser’ had been used in connection with electric fencing in the UK and Australia since the 1930s and that this predates the use of Energizer’s trademarks.

George Salthouse, on behalf of the IPO, agreed that the goods covered by Energizer’s trademarks encompass the goods covered by Pakton’s applied-for mark, but that the trademarks are only visually, aurally and conceptually similar to a low or medium degree.

However, Salthouse concluded that “there is a likelihood of consumers being confused into believing that the applicant’s goods are those of the opponent or provided by some undertaking linked to it”.

The IPO held that Energizer was successful in its opposition and ordered Pakton to pay £900 ($1,200) in costs.

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