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15 October 2018Trademarks

Gumtree fails in UK trademark invalidation action

Advertising website Gumtree.com has failed to persuade the UK Intellectual Property Office (IPO) to invalidate an individual’s ‘Gumtree’ trademark.

The IPO delivered its decision on Thursday, October 11.

In 2015, Michel Maurer applied to register ‘Gumtree’ for a range of goods in classes 18, 25, and 28, including leather bags, clothing, and sports equipment. The mark was registered in 2016 (3,142,026).

In particular, he uses the ‘Gumtree’ mark in relation to his Gumbies-branded flip-flops.

At the IPO proceedings, Maurer said that he has been selling Gumbies flip flops since 1993 in Australia. In 2006, he created Gumbies in the UK, and the platform now sells the Gumbies flip-flops.

Explaining the Gumbies-Gumtree link, Maurer said that “the Gumtree is a tree which forms an integral part of the Australian landscape,” and the gum (latex) from the tree forms part of the flip-flops.

In 2017, Gumtree sought to have Maurer’s mark declared invalid. The advertising website owns an EU trademark for ‘Gumtree’ (3,930,989), registered in 2005.

The mark, which has been used throughout the UK since 2000, covers services in classes 35, 39, and 43. Gumtree relied on advertising and online information services in class 35 in its opposition.

As the ‘Gumtree’ marks are identical and they cover similar goods and services, there is a likelihood of confusion between them, the company claimed.

Gumtree said that Maurer’s use of the mark takes unfair advantage of its earlier-registered mark by free-riding on its reputation and “illegitimately benefitting” from its marketing efforts.

In response, Maurer said that the earlier-registered mark does not have a reputation in the UK. He also denied that the services covered by the marks are similar.

Last week, the IPO conceded that Gumtree’s earlier-registered mark has been used in relation to the class 35 services it covers, and also that it has a strong reputation and a high level of distinctiveness.

However, the IPO found that there is “no similarity” between any of the goods covered by Maurer’s mark and the class 35 services that fall under Gumtree’s mark.

The nature of advertising services is different to that of leather bags, clothing, and sports goods, the IPO said. It added that the method of use will also be different, and confirmed that Maurer’s goods are not in competition with the services of Gumtree.

“Whilst classified advertising services may well be used to advertise the whole range of goods in the contested specification, along with many others, it cannot be said that any of the goods are indispensable or important for the use of the services (or vice versa),” the IPO said.

The IPO concluded that there is no likelihood of direct or indirect confusion between the marks.

As Gumtree’s application for the invalidation of Maurer’s mark failed, the IPO ordered the website to pay Maurer £1,000 ($1,316) towards his costs.

Want brand protection that counts toward your bottom line? Join WIPR on October 17th for a complimentary webinar.  Find out more here.

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