17 July 2019TrademarksRory O'Neill

O2 fails to convince UKIPO in TM opposition appeal

The UK Intellectual Property Office (IPO) has upheld a decision which dismissed a trademark opposition filed by Spanish-owned telecommunications provider O2.

The telecoms company had unsuccessfully opposed the “CX02” mark filed by, whose business includes online retail.

On appeal, an appointed person of the IPO rejected O2’s arguments, finding that some of their marks lacked a high level of distinctiveness, and did not enjoy the “massive reputation” claimed by O2 with respect to all the relevant goods and services.

In 2017, CX02 applied to register the mark in classes 9, 35, 36, 38, 42 and 45.

O2 opposed the mark, claiming that it would infringe five of its prior marks, including three for “O2”, stylised as the chemical molecule, and two for “O2”.

In the original decision, issued in October 2018, the IPO hearing officer ruled that the “O2” marks were distinctive to an “average” degree, noting that there was “no immediately apparent concept which might make ‘O2’ more inherently memorable than any other two letter/number combination”.

The stylised “O2” marks, the hearing officer found, were more distinctive, given that they presented a concept in the form of a chemical molecule.

On appeal, O2 argued that the hearing officer ought to have taken into account the aural similarity between its different marks, which would be spoken “the exact same way”.

O2 claimed that, aurally, the distinctiveness of its marks should be the same, and that the hearing officer should have attributed a higher level of distinctiveness to the "O2" marks.

Lawyers for CX02 responded that “the distinctiveness assessment should be based on the mark as it is on the register”.

In the decision, the IPO’s appointed person ruled that, while there was “an inherent logic” to O2’s argument, assessing different levels of visual, aural, and conceptual distinctiveness would “create substantial problems elsewhere in the system”.

Lawyers for CX02 had also accepted that O2’s marks had a reputation with respect to telecoms and entertainment services.

O2 also argued that the hearing officer had unlawfully “struck out” words from the specification of goods and services in CX02’s application.

The hearing officer had added the term “but not including mobile phones”, and other related goods, to the end of a list of goods and services in class 9, in order to resolve the opposition.

The appointed person cited case law which “expressly approved of an approach adopted by the Hearing Officer, namely carving out the goods where the opposition was successful”.

Chris McLeod, partner at Elkington & Fife in London, represented CX02 in the case.

Speaking to WIPR, McLeod said his client was “very pleased” at the outcome, and had always maintained that the respective marks were not confusingly similar.

The IPO awarded costs of £1,000 ($1241) to CX02.

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