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18 September 2018Trademarks

UKIPO brings bad news for Which? in TM opposition

UK-based consumers’ association Which? has been unsuccessful in opposing a trademark application made by a restaurant advice company.

The UK Intellectual Property Office (IPO) handed down its decision on Wednesday, September 12.

In May 2017, Which Menu applied to register a figurative mark consisting of what appears to be a menu, cutlery and the wording ‘which menu’ and ‘find your favourite dish’.

The trademark was published that same month for services such as advertising and business management.

Which Menu is an app that describes itself as a “hub” of information to help people decide where to eat. Restaurateurs can also provide details of their menus and special offers.

The trademark was opposed by Which? on the ground that the mark is similar to the association’s earlier trademarks.

In its opposition, Which? cited four of its earlier trademarks including for the word marks ‘Which?’ (UK number 2,532,716) and ‘Which’ (2,432,015), as well as two figurative marks both consisting of the word ‘Which’ in white font with a black question mark on a red background (3,134,582 and 10,605,004).

According to Which?, its earlier marks and the applied-for mark are visually, aurally and conceptually similar, and the services at issue are identical or similar. As a result, there is a high likelihood of confusion among the relevant public.

In its opposition, Which? said that the word ‘which’ is the dominant element in the later mark, while the words ‘find your favourite dish’ are only descriptive.

Which Menu responded by filing a counter-statement. The company said that the marks are sufficiently different and that there would be no likelihood of confusion. According to Which Menu, Which? did not focus on the totality of its mark, including the figurative element and the additional words ‘menu’ and ‘find your favourite dish’.

Andrew Feldon, on behalf of the IPO, said that there are sufficient differences between the visual, aural and conceptual impacts of the marks at issue. As a result, the average consumer would not be subject to direct confusion.

While he said that both the earlier marks and the applied-for mark consist of the verbal element ‘which’, this is the only articulated element in the earlier marks. However, Which Menu’s applied-for mark includes several other verbal elements. According to Feldon, the marks should be considered aurally similar only to a low degree when considering all the components of Which Menu’s applied-for mark.

“As there is no likelihood of confusion between any of the earlier marks relied upon by the opponent, the opposition has failed,” said Feldon. “Subject to appeal, the applied-for mark may proceed to registration.”

Which? was ordered to pay Which Menu £1,100 ($1,444).

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