whitemay_
13 April 2018Trademarks

UKIPO serves up bad news to ‘MasterChef’ TM owner

The UK Intellectual Property Office (IPO) has rejected a trademark opposition filed by the production company behind popular TV series “MasterChef”.

The IPO handed down its decision, which rejected the production company’s opposition to the tmark ‘Miser Chef’, on Tuesday, April 10.

In July 2016, London-based Mr Chef applied to register ‘ Mister Chef’ in relation to baking and cooking apparatus, in class 21. Mr Chef makes and sells kitchen utensils and bakeware goods.

Production company Shine TV filed an opposition to the applied-for mark based on two earlier UK trademarks (2,118,654 and 2,563,306) and two earlier EU trademarks (8,316,135 and 6,952,733).

The earlier marks are comprised of the word ‘MasterChef’ and, with the exception of the ‘306 mark, are registered in class 21 for various kitchen utensils. The ‘306 trademark is registered for entertainment services in class 41.

“MasterChef” is now in its 21st season, having started in the 1990s. The 2015 final of the competition was watched by around 25% of the UK’s TV viewing public, according to evidence filed by Shine TV.

It said the “ MasterChef” programme is “heavily merchandised” and the public would mistakenly believe the products sold under the ‘Mister Chef’ mark are related to the TV show, according to the production company.

The IPO confirmed that the goods covered by the applied-for mark are identical to those covered by the ‘135 mark.

Both the applied-for mark and the earlier marks are comprised of ten letters, nine of which are the same and in the same order. The IPO concluded that they are “highly similar to the eye and to the ear”, but added that “conceptual differences may counter visual and aural similarities”.

The IPO rejected Shine TV’s argument that the marks are conceptually similar. It said ‘Mister’ is a title of an adult male, whereas ‘Master’ refers to a “skilled practitioner of a particular art”.

Compared as wholes ‘Mister Chef’ and ‘MasterChef’ have “quite distinct meanings”, the IPO said. It found that the UK public would not make “any” link between the applied-for mark and the goods and services related to Shine TV’s marks.

Overall the differences are “sufficient to avoid a likelihood of confusion” as the different meanings of the marks mean that any confusion amongst average consumers is “unlikely”, the IPO concluded.

The IPO decided that the ‘Mister Chef’ mark can be registered, subject to appeal. Each party must bear its own costs.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today’s top stories

‘Black Friday’ TM lacks distinctiveness in Germany, says trademark office

China to introduce punitive damages for IP infringements

Ford settles patent clash with hybrid vehicle developer

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk