UKIPO rules against O2 in TM opposition
UK telecoms provider O2 has been unsuccessful in its attempt to block the registration of a trademark which it claimed would cause confusion with its O2 Guru brand.
In a decision on January 22, the UK Intellectual Property Office (IPO) ruled that Mezrin Lurii Valeriyovych could proceed to register the trademark ‘content guru’ (UK number 1354634) for “web indexing for commercial or advertising purposes and website design consultancy” and similar services.
O2 had opposed the application, arguing that the mark would infringe its existing trademarks. In its opposition, O2 relied on two marks in particular: ‘O2 Guru’ (UK number 16057011) and the series of two marks ‘GURU/Guru’ (UK number 3024436).
It claimed the ‘content guru’ mark should not be registered because the mark and the goods or services it covers are too similar to O2’s earlier trademarks.
Valeriyovych’s mark was first registered in Ukraine on November 3, 2016.
The IPO said O2’s ‘O2 Guru’ mark had not been registered until November 18, 2016, and therefore the network provider could not rely on this mark for its argument. Instead, the IPO used the ‘GURU/Guru’ mark, which was registered in October 2016 in its comparison, as this qualifies as an earlier mark.
O2 argued that its ‘436 mark, for “retail services and online retail services connected with telecommunications apparatus, mobile telecommunication apparatus, mobile telecommunications handsets”, covered services highly similar to the services offered by Valeriyovych.
The IPO disagreed. It said the retail services offered by O2 and the advertising services offered by Valeriyovych are not the same and neither are the targeted consumers, with Valeriyovych’s advertising services being offered to commercial enterprises, and O2’s retail services to the general public.
Although the IPO agreed that “there is some overlap of nature” between the two services, it said it is “not normal for the respective services to be in competition” and, therefore, the level of similarity is low.
With regard to the likelihood of confusion between the marks, the IPO referred to an earlier ruling, Sabel v Puma, which determined that the average consumer normally perceives a mark as a whole and does not analyse its various details.
The IPO said that visually and aurally, the marks share similarity because of the presence of ‘Guru’, which will be pronounced as the syllables Goo-Roo. However, there is a difference created by the word ‘content’ appearing at the start of the contested mark.
Writing on behalf of the IPO, Mark Bryant said he accepted that the commonality of the word ‘Guru’ in both marks may bring O2’s trademark to mind, but the “link is likely to be so fleeting and weak” that it is very unlikely the ‘content guru’ mark will result in any detriment or unfair advantage.
Bryant concluded that the registration of ‘content guru’ could proceed and that O2 had failed on all grounds of its argument.
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