UKIPO upholds American Airlines’ TM opposition
The UK Intellectual Property Office has confirmed its decision to grant a trademark opposition filed by American Airlines.
Hearing officer Al Skilton delivered the supplementary decision on Wednesday, January 24, upholding the initial decision of January 19 for the opposition.
Advantage Travel Centres applied to register UK trademark number 3,167,622 as a series of two design marks, in colour and greyscale, in classes 39 and 43, covering travel and accommodation services. It similarly applied to register 3,167,625 as a series of two marks in classes 35 for business services.
Travel company American Airlines opposed the applications by Advantage Travel Centres, which owns travel agency Advantage Holidays, claiming the applied for marks would be confusingly similar to its existing registrations.
American Airlines cited EU trademark number 8,125,304 (classes 35, 39, 41, 43) and UK number 3,087,256 (classes 35, 36, 39, 43) as examples.
Section 5(2)(b) of the Trade Marks Act 1994 precludes the registration of a mark that is similar to a trademark already registered in the same, or similar, areas.
Advantage submitted a “fall-back position” by letter, dated October 2017, but this was not considered in the original decision. The supplementary decision was therefore issued to reflect this, with Skilton saying the letter should have been previously considered.
In relation to the ‘622 mark, if a likelihood of consumer confusion was found, the fall-back proposed removing travel and transportation services from class 39. Advantage additionally proposed limiting the remaining services through a worded disclaimer stating “but not including any such services provided for others by means of an incentive rewards program”.
The officer noted that the specified term “travel and transportation services” does not appear in class 39, and regardless, each service specified within the class relates to travel and could fall under such a category.
Skilton said the proposed limitation did not seek to limit the category of services or change the nature of services covered, but rather to alter the way they are delivered. It was therefore found to be “unclear” and “unacceptable”.
In addition the mark remains visually and conceptually similar to that of American Airlines’ mark and covers the same services, a matter initially explored in the original decision.
With regards to the ‘625 mark, Advantage similarly offered to limit the services included in class 35, with the addition of the wording “all for supply to travel agents and travel agencies”. For the same reasons this was rejected.
The officer asserted that limitations like this are likely to be effective only where the parties operate in different sectors. Limiting the specification to travel services offered to agents and agencies will not avoid confusion with American Airlines’ general travel services, which “naturally include services offered to travel agents”.
Advantage’s fall-back proposals were therefore rejected and the earlier decision, in favour of American Airlines’ opposition, was upheld. Advantage was ordered to pay the sum of £2,100 ($2,954) in costs.
American Airlines told WIPR it is "pleased" with the decision, and Advantage declined to comment.
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