Electric bicycle dispute signposts more collisions ahead

The global electric bicycle market generated $24.9 billion in 2020 and is estimated to reach $66.5 billion by 2030, according to Allied Market Research.

A rise in health-consciousness and preferences towards more eco-friendly means of transport are driving up sales, leading to greater competition in the market. And with competition comes IP disputes.

US brand  Volton Bicycles recently celebrated a successful trademark opposition proceeding against a rival.

A trial before the US Trademark Trial and Appeal Board (TTAB) found in Volton’s  favour on December 15, 2021, and the appeal period has now closed.

The competitor, who was seeking to register ‘Bolton’, rebranded after the TTAB’s ruling.

“Over the past decade, we have built a trusted brand in the electric bicycle space,” said Joseph Marchfield, founder and director of product at Volton Bicycles.

“This ruling allows us to continue to develop quality electric bicycles for our customers, backed by a strong and protected brand.”

WIPR asked Gavin O’Keefe, managing partner of MBHB, which represented Volton, to unpack the case and what it means for this fast-growing sector.

WIPR: What litigation issues and disputes are you seeing in the electric bike sector?

Gavin O’Keefe: The electric bicycle industry has been on the rise in recent years, especially through the COVID-19 pandemic, as people have been looking for new ways to have fun and get exercise outdoors. And with spikes in gas prices, electric bicycles have become an increasingly popular way to commute.

With all this increased demand, there are a lot of fairly new start-ups in the space and everyone is eager to get up and running quickly. But this often means that companies skip over what should be standard IP-related diligence activities, such as conducting a trademark clearance search for a new brand name.

As a result, new players in the space are often finding themselves in trademark disputes just like this.

What were the highlights of the case?

This case turned on the question of whether there was a likelihood of confusion between two marks—the opposer’s standard character mark ‘Volton’, and the applicant’s styled version of ‘Bolton’, with the ‘B’ including a lightning bolt design element.

The goods at issue (electric bicycles) were legally identical, so the analysis focused on the marks themselves. After working through the various DuPont similarity factors and determining that, among other things, the marks are similar in sight, sound, and commercial impression, the TTAB determined that such a likelihood of confusion exists. As a result, the TTAB sustained the opposition and rejected the applicant’s trademark application.

Was there anything unusual?

The applicant seemed to take a “kitchen sink” approach and offered a variety of different types of arguments, but the TTAB was not convinced.

As one interesting approach, the applicant argued that its Bolton mark was likely to be pronounced as “Bōl-tən” rather than “Bolt-On” and therefore it would allegedly not be confused with the opposer’s mark which was likely to be pronounced as “Volt-On”.

But in its opinion, the TTAB rejected this argument noting that there is no correct pronunciation of a trademark and that it is not possible for a trademark owner to control with certainty how purchasers will vocalise their trademarks.

Another interesting point is that during the testimony declaration, the applicant pointed out that purchasers of electric bicycles are unlikely to make an impulse purchase given the relatively high cost of such goods, suggesting that this would reduce the chance of there being any confusion.

But in its opinion, the TTAB noted that neither the opposer’s nor the applicant’s identification of goods contain limitations as to classes of purchases or price of products. As such, purchasers may also include ordinary consumers who may rent electric bicycles or purchase less expensive models.

Will this impact future trademark cases?

Certainly, as this case serves as another example of arguments that, while interesting or creative, is ultimately not enough to overcome fundamentally sound evidence supporting the existence of a likelihood of confusion, especially in a situation in which the opposer’s mark is a strong and well-established brand, like Volton.

Gavin O’Keefe is managing partner of MBHB. He can be contacted at:  okeefe@mbhb.com