Sainsbury’s fails to block clothing TM
The UK Intellectual Property Office (UKIPO) on Monday threw out a trademark opposition brought by UK supermarket Sainsbury’s.
Sainsbury’s had sought to block clothing retailer Sain from registering the company name as a trademark.
In 2017, the clothing company applied to register ‘Sain’ and ‘Sain.’ in class 25 covering an extensive list of clothing items. Sainsbury’s opposed the trademark applications in June 2018, claiming that it would infringe its earlier marks.
According to UKIPO, however, there was no likelihood of confusion between the ‘Sainsbury’s’ and ‘Sain’ marks.
UKIPO said that the levels of similarity between the marks were too low to cause direct confusion among consumers.
The supermarket also argued that there was a strong likelihood of indirect confusion, as consumers may believe that ‘Sain’ was a sub-brand or derivative of Sainsbury’s own clothing range.
According to UKIPO however, the case law was “clear that no likelihood of confusion arises where a later mark merely calls to mind the earlier mark”.
UKIPO also stressed that “a finding of indirect confusion should not be made merely because the two marks share a common element”.
Sainsbury’s opposition was based on more limited grounds than it had initially intended.
In January this year, UKIPO eliminated certain claims from Sainsbury’s opposition as the supermarket had failed to submit any evidence of reputation or goodwill.
Sainsbury’s challenged that decision, citing its request for an extension two and a half weeks before the deadline to submit the files in December 2018.
At a case management conference in January 2019, a UKIPO hearing officer upheld the decision, ruling that “he did not consider holidays and the Christmas period to be ‘strong and compelling’ or justifiable reasons for additional time”.
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