UKIPO puts mattress retailers’ TM dispute to bed
The UK Intellectual Property Office (IPO) has dismissed a mattress retailer’s trademark opposition, after finding that its opposition to a competitor’s mark was “untenable”.
The IPO’s decision was handed down on April 5.
In July 2016, Mattress Firm, a bedding retailer, applied to register the trademark ‘Sleep Happy’ in class 35, covering retail store services in relation to bedding products.
Competitor Dreams opposed the application in light of its own EU trademark (number 12,956,124), which covers class 35, as well as classes 20 and 24. Registered in 2014, the trademark covers retail services relating to the sale of furniture including bedroom products.
Dreams’ figurative mark includes the words ‘the bed people’ above the phrase ‘Save money. Sleep happy’. It features purple, pink, and white colouring, and the mark is shaped in such a way as to represent a double bed.
In its opposition, Dreams said the applied-for mark is “wholly contained” within its own mark, which results in visual, phonetic, and conceptual similarity between them. Mattress Firm disagreed.
The IPO said that the services covered by both marks in class 35 are “self-evidently identical”.
Teresa Parks, on behalf of the IPO, determined that average consumer in relation to the marks is a member of the general public who will likely be “mindful” of advertisements, making the visual aspect of the marks the “most important element” to consider.
Though the words of the mark and the applied-for mark “coincide”, the IPO said the marks as a whole are not visually similar. “The contested mark is characterised by its simplicity whilst the earlier mark is visually elaborated”, it explained.
As ‘Sleep happy’ is not a dominant element of Dreams’ mark “the marks in question are phonetically highly dissimilar”, the IPO said. The same reasoning was used to find that the marks only had a low degree of conceptual similarity.
Although Dreams argued that there was a likelihood of indirect consumer confusion due to the ‘Sleep Happy’ element, which it said has an independent distinctive role in the figurative mark, the IPO said the ‘Save money. Sleep Happy’ element of the mark is most likely to be understood as a strap-line or slogan.
“The fact that the contested mark only reproduces two of the four words comprising the strap line” makes Dreams’ argument “untenable”, said Parks, confirming that there was no likelihood of confusion.
The IPO rejected Dreams’ opposition to the ‘Sleep Happy’ mark and ordered the company to pay Mattress Firm £800 ($1,134) towards the cost of the action.
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