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5 July 2022Trademarks

UKIPO rejects bank’s bid to halt TM registration

A leading investment bank had opposed a registration arguing that the disputed marks were highly similar to its own marks.

Goldman Sachs has failed in its attempt to have the UK Intellectual Property Office (IPO) halt the registration of UK trademark application ‘GLDM’.

In a decision handed down on Thursday, June 30, the IPO held that the trademark of World Gold Trust Services—a wholly-owned subsidiary of the World Gold Council, the market development organisation for the gold industry—could proceed to registration.

World Gold had applied to register the trademark ‘GLDM’ in December 2020, covering classes 35 and 36. Services covered included market analysis and research services; international business consulting services related to trading gold; and gold exchange services, namely, exchanging gold of others for a different class of asset.

In June last year, Goldman Sachs opposed the trademark on the basis of sections 5(2)(b) and 5(3) of the Trade Marks Act 1994. The bank relied on its earlier EU trademarks for ‘Goldman Sachs’ (covering services in class 36) and ‘Goldman’ (also covering services in class 36).

World Gold filed a counterstatement denying the grounds of opposition and requesting Goldman Sachs to provide proof of use in relation to both earlier marks.

While the IPO concluded that there had been genuine use of both Goldman Sachs’ earlier trademarks in relation to the services covered, it also rejected the bank’s opposition arguments.

According to Teresa Perks, on behalf of the IPO, the services in class 36 were identical or highly similar and the contested services in class 35 of World Gold’s trademark were similar to a medium degree to the services provided under Goldman Sachs’ marks.

On similarity of the trademarks, the IPO said there was a very low level of visual similarity, no or an extremely low level of aural similarity and no conceptual similarity.

“I reject the submission that the contested ‘GLDM’ mark is likely to be understood as being the acronym of ‘GOLDMAN’. As a consequence, I find that the letters ‘GLDM’ will be seen merely as the four letters ‘G’, ‘L’, ‘D’ and ‘M’ and will be expressed in that way,” said Perks.

Although the IPO accepted that Goldman Sachs’ marks benefitted from a degree of enhanced distinctive character and so possessed a medium to high degree of distinctive character, the IPO found that the differences between the marks are such that average consumers are unlikely to be directly confused and there was no likelihood of indirect confusion.

The IPO also rejected Goldman Sachs’ section 5(3) opposition.

“Although there are many gaps in the evidence, I am prepared to accept that the opponent had a reputation sufficient to sustain its action under section 5(3) of the Act at the relevant date both in the EU and in the UK in respect of the financial services covered by the registrations,” said Perks.

However, Perks then found that there were no grounds to consider that the average consumer would make any link between the competing marks.

“The evidence fails to establish that ‘GLDM’ is an acronym by which the opponent is known and/or that the relevant public will see the letters ‘GLDM’ as a direct and obvious reference to the opponent, ie a short version of the marks ‘GOLDMAN’ or ‘GOLDMAN SACHS’,” said Perks. “Further, the differences between the marks are so stark that, to my mind, they make the link very unlikely. The requisite link has not been established.”

Goldman Sachs was ordered to pay £1,000 ($1,208) to World Gold within 21 days.

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