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10 July 2018Trademarks

Mixed fortunes for Scottish Rugby at UKIPO

The Scottish Rugby Union achieved partial success in its opposition to the trademark ‘SRU.COM’ last week at the UK Intellectual Property Office (IPO).

On July 3, the IPO refused the trademark application for some services, including training and entertainment services, but allowed registration for others, such as the production of TV programmes and films.

SRU International, a TV programming and broadcasting company, applied to register ‘SRU.COM’ back in August 2016 for a range of services in class 41.

But the Scottish Rugby Union took issue with the trademark, claiming it was too similar to its own mark ‘SRU’ (UK number 2,023,301). The trademark also covers class 41, but with a greater focus on sporting activities such as the organisation of sporting events.

The IPO limited the comparison of services covered under the Scottish Rugby Union’s trademark to sporting events as well as education relating to sport because the “modest” evidence filed by the organisation only demonstrated genuine use for those two services.

Louise White, on behalf of the IPO, concluded that the education in relation to sport service of the earlier mark is identical to certain services covered by the applied-for trademark, including teaching and training.

On the later mark’s entertainment services and earlier mark’s sporting events, White said that the services are similar in terms of purpose, as sport also entertains and engages.

“They can differ in nature and method of use but can coincide in respect of the end user. They are considered to be similar, to a low degree,” she said.

Other services covered by the applied-for trademark cover the arranging of exhibitions for cultural purposes.

“In relation to the former, the purpose is to educate the user about, for example, the arts and other forms of human intellectual achievement. Though, strictly speaking, sport may not be classed as an art or an intellectual achievement, nonetheless it is considered that sport can form part of a nation’s cultural identity,” noted White, concluding that the services are similar to a low degree.

The IPO found the marks to be visually highly similar, given that the additional element of ‘.com’ is known to refer to a web address, making ‘SRU’ the distinctive element.

The trademarks were also found to be highly similar aurally and conceptually, but on the latter point, only for those who are aware that SRU stands for the Scottish Rugby Union.

After concluding that the average consumer is likely to display a reasonable degree of attention when purchasing, given that the purchases are infrequent and relatively expensive, the IPO determined that there is no likelihood of direct confusion.

“It is considered that the marks in conflict in these proceedings provide a clear illustration of the operation of indirect confusion. Consumers, upon seeing the later trademark will unequivocally conclude that it is merely the web address of the earlier trademark,” White added.

Because the parties achieved a “roughly equal measure of success”, White ordered that they bear their own costs.

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