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15 February 2018Trademarks

Ford fails ‘completely’ at UKIPO, despite citing Top Gear

Ford Motor Company has failed in its attempt to oppose the trademark ‘Lynk&Co’ at the UK Intellectual Property Office (IPO).

The opposed mark, which covers class 12 (vehicles) and class 37 (motor vehicle maintenance), was applied for by Chinese automotive company Geely in May 2016.

But Ford took issue with the application, claiming that the applied-for mark was phonetically similar to its own trademark ‘Lincoln’ and that the goods covered by Geely’s mark in class 12 were similar to those specified by the ‘Lincoln’ mark in class 12, namely “Passenger automobiles and parts and accessories”.

Ford also alleged that use of the applied-for mark would free ride on its advertising and promotion of its mark and would be detrimental to Ford’s reputation, as its vehicles are prestigious and luxurious rather than being like the “mass appeal vehicles” sold by Geely.

Peter Tassie, chief trademark counsel at Ford, filed a witness statement saying that although sales of Lincoln cars in the UK have been moderate, the reputation of the cars extends beyond this as they are luxury vehicles.

Tassie cited TV programme “ Top Gear”—stating that the popularity of the series means the UK public has been exposed to the Lincoln brand. A search of the “Top Gear” website revealed references to Lincoln cars during the period 2006 to 2016, according to the decision.

George Salthouse, on behalf of the IPO, put it to Ford’s counsel, Michael Edenborough QC, that Ford did not offer any vehicles for sale in the UK under the ‘Lincoln’ mark or advertise or market Lincoln vehicles in the UK.

According to the IPO, Edenborough argued that, provided someone was importing Lincoln vehicles into the UK and offering them for sale, then a market was being created.

Edenborough noted that Ford didn’t have any formal links with the parties who had registered Lincoln cars in the UK, but went on to say that because Ford hadn’t tried to prevent those parties from registering and offering the Lincoln vehicles for sale, Ford could still rely on that activity to uphold its registration.

But Salthouse said: “To my mind, this is not intentional use of a mark but mere happenstance.” He added that Ford’s opposition “fails completely” and ordered the company to pay Geely £1,700 ($2,388).

The decision was handed down by the IPO on Monday, February 12.

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