UKIPO rules on trademark spat between rival Amazon sellers
The UK Intellectual Property Office (IPO) has invalidated a registered trademark, following a dispute between rival electronic companies which operate online businesses on Amazon, in a decision handed down on September 29.
In 2017, electronics company Wiltsgrove applied to register the trademark ‘BC Electronics’ for remote controls, which was opposed by William Ivor Cutlan in November 2018. Cutlan held that the trademark was filed in bad faith and should not have been registered because it had been done so in order to disrupt his online business on Amazon selling similar products.
He stated that he had used the sign ‘BC Electronics’, where ‘BC’ stood for his initials, Bill Cutlan, for the online sales of remote controls, including in connection with his shopfront on the Amazon marketplace platform.
Mr Cutlan stated that he had sold goods under the mark on Amazon since 2013, and that he had built up a reputation and goodwill for his brand, which he stated was “evidenced by the positive feedback attributed to my online shop through customer feedback”.
Wiltsgrove, put forward a counter argument, alleging that Cutlan had acted “in deceitful bad faith”, by creating a suite of half a dozen brands, including one called BC Electronics, after spotting the good reviews for the Wiltsgrove’s goods.
The IPO found however, that Wiltsgrove’s claim was undermined by the evidence filed which demonstrated Cutlan’s real and long-standing interest in and use of the sign in relation to replacement remote controls.
It further held that Wiltsgrove “knew of the applicant’s storefront trading on Amazon, registered a trademark for BC Electronics for the goods in which both parties trade, and promptly deployed its registration as a basis to activate Amazon to delist the applicant’s goods…” and that the company had registered the contested trademark for strategic commercial advantage “in a way that falls short of honest practices”.
He added there was no evidence that Cutlan had changed his Amazon BC Electronics storefront name, and little evidence of Wiltsgrove’s goods being “notably well reviewed as to provoke an opportunistic adoption”.
The IPO found that it was “likely that the proprietor’s objective in choosing and filing the contested trademark was to displace a competitor seller by invoking the registration in the context of the IP protection policies of the relevant online selling platform,” and that it was an abuse of the trademark system.
The IPO invalidated the disputed trademark and ordered Wiltsgrove to pay Cutlan costs.
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