The Art Newspaper refused UK TM for most goods
The Art Newspaper has been refused a UK trademark registration for most of the goods and services it applied for, after an opposition from a New York-based software company.
The monthly paper, which has international offices in London and New York, applied to register ‘Art Focus’ as a trademark at the UK Intellectual Property Office (IPO) in 2018.
The application covered a wide range of goods and services, including digital media publications, printed newspapers, podcasts, and e-commerce platforms.
Information Builders, which offers various data and analytics services, opposed the filing, citing its own UK trademark for ‘Focus’, covering areas such as computer software and related print publications, and software development.
According to the IPO examiner, while consumers were unlikely to directly confuse one mark for the other, they would likely regard The Art Newspaper’s mark as a brand extension of ‘Focus’.
The Art Newspaper had contested this argument on the grounds that the conventional form for sub-brands was that the principal brand would come first, rather than second.
“I agree this is often the case, but it is also not uncommon for the sub brand or brand extension to precede the brand especially if the sub brand is a descriptor as is the case here,” the IPO examiner wrote.
Where the goods and services of the two companies’ marks overlapped, there was a likelihood of indirect confusion, the examiner concluded.
Information Builders’ broad registration for “computer software” covered many of the same goods and services applied for by The Art Newspaper, the IPO found.
The IPO did permit ‘Art Focus’ to proceed to registration for a limited range of goods and services which were not covered by Information Builders’ mark.
These included podcasting, set design, research services, and the design of TV and audio-visual formats.
The Art Newspaper was instructed to pay Information Builders £800 ($956) as a contribution to its legal costs.
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