UKIPO limits UBS trademark scope
The UK Intellectual Property Office (IPO) has limited the services of a UBS Group trademark relating to a financial investment tool, in opposition proceedings brought competitor Wealthkernel.
The decision was delivered on Friday, February 9, following a hearing in December last year.
Financial services firm UBS applied to protect ‘ UBS Smartwealth’ as an international trademark in April 2016. The mark sought to cover business information and related services in class 35, and banking and related services in class 36.
According to the IPO’s decision, UBS Smartwealth is an investment service through which clients have on-the-go access to their investments.
Wealthkernel, a rival, filed an opposition in April 2016 to UBS’s application to designate UK protection of the mark, in relation to most services in class 36.
Wealthkernel claimed priority, as it had applied to protect its own similar marks in October 2015. The company’s UK trademark series 3,131,114 consists of two marks: ‘Wealthsmart’ and ‘Wealth Smart’. They are registered in class 36, covering WealthSmart investment advisory services.
According to Wealthkernel, ‘UBS Smartwealth’ is similar to its own marks and seeks to cover similar services, which prompts a likelihood of confusion.
In response, UBS said that “the inclusion of the UBS house mark conveys information to consumers about the commercial origin of the services being offered and, as a result, the respective trademarks are conceptually dissimilar and distinguishable”.
The IPO found that because the letters ‘UBS’ appear before the word ‘Smartwealth’ in the contested mark, ‘UBS’ will “strike the consumer” before the word ‘Smartwealth’. However, as the word ‘Smartwealth’ remains similar to ‘Wealthsmart’, the IPO found the marks to be visually similar to a medium degree.
While the IPO found that the marks only had a low degree of aural similarity, it did find that there was a high degree of conceptual similarity, as the meaning of the words ‘smart’ and ‘wealth’ do not differ depending on the order they appear in.
The IPO agreed with Wealthkernel that the marks “could easily be confused through imperfect recollection”. However, average consumers of financial services are “likely to pay an above average degree of attention when selecting a service provider”, reducing the likelihood of confusion, added the IPO.
Overall, the office found that there was a likelihood of indirect confusion, if the marks are used in relation to identical services, and that the addition of ‘UBS’ was “not sufficient to distinguish” the service providers.
The ‘UBS Smartwealth’ mark will now be protected in class 35, which was unopposed by Wealthkernel, and limited to three of the 17 services UBS sought to cover in class 36.
UBS was ordered to pay Wealthkernel £1,500 ($2,080) towards costs.
Speaking to WIPR, Karan Shanmugarajah, CEO of Wealthkernel, said that he is happy with the decision, as "it's not easy to challenge a firm as large as UBS".
Shanmugarajah added: "Just a little food for thought; imagine what UBS would do if the shoe was on the other foot and we started a service called WealthSmart USB."
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