The UK Intellectual Property Office (IPO) has invalidated a trademark owned by a technology company, after Google convinced the office that the mark was a misrepresentation to the public and damaged Google’s goodwill.

On Thursday, February 22, Google’s request for invalidation of the trademark ‘Blink’, applied for by UK-based Nuanti, succeeded in its entirety.

The ‘Blink’ trademark (UK number 3,003,117) was registered in September 2013 and covers class 9, including software and operating systems.

Google claimed that it has been providing services under its ‘Blink’ trademark since April 2013 and has acquired goodwill under the sign.

The ‘Blink’ trademark is used by Google within an open source software project known as “The Chromium Projects”. Blink is a web browser engine developed as part of the project and the successor to WebKit.

The search engine also alleged that Nuanti had applied for ‘Blink’ in bad faith.

According to Google, Nuanti’s director knew about Google’s use of ‘Blink’ (and the intention to use it in the UK) because of the director’s previous role in contributing source code to the WebKit project.

Nuanti filed a counterstatement denying Google’s claims but admitting that it had previously enjoyed a “close relationship” with Google.

In a witness statement, Nuanti’s director said the company has used the mark since 2011, and explained its origins relate to work he carried out for WebKit on blinking (flashing of text) in 2007.

The IPO noted that the director considers that this was Nuanti’s first use of ‘Blink’.

In making the decision, the IPO looked at the claim of passing off, which first requires the presence of goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation.

“In the circumstances in these proceedings, the applicant launched Blink as its new browser engine a mere 20 days prior to the relevant date, namely the filing date of the application by Nuanti. However, the applicant (Google) was, at that point, already a well-established company in the web browser industry,” said Louise White, on behalf of the IPO.

However, White added that it is currently unclear whether an advertising campaign featuring the mark can create protectable goodwill without any actual sales to UK customers.

Although Nuanti’s director had contended that it had used the ‘Blink’ mark since 2011, the IPO held that there was no “persuasive evidence to corroborate this claim” and set it aside.

White concluded that Google had established goodwill and that ‘Blink’ was distinctive of Google’s business.

She also noted that the attacked trademark is identical to Google’s mark and that the field of activity is identical, so misrepresentation is “inevitable”.

White found that the damage was foreseeable, noting that the parties are potentially in direct competition with each other and that there is “clearly scope for Google to lose customers” to Nuanti or lose control of its own reputation.

Nuanti had also applied for the mark in bad faith, according to the IPO.

The technology company was ordered to pay Google £2,350 (3,281).

A spokesperson for Nuanti said: “The decision is bad news for small businesses and particularly for the open source technology community that works on projects in the public interest alongside larger companies.”

The spokesperson added that Nuanti thought the decision had failed to sufficiently recognise its association with the ‘Blink’ mark during the years prior to Google’s announcement.

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