27 June 2022Trademarks

Shakira secures partial TM win at UKIPO

The UK Intellectual Property Office (IPO) has invalidated the trademark ‘Shakara’ in relation to certain goods, in a partial victory for singer Shakira.

But, while the IPO invalidated ‘Shakara’ in relation to some goods in the 20 June decision, Shakira’s application for invalidation also failed in relation to others.

The trademark at issue, ‘Shakara’ was registered in January 2018 by an individual named Steve Nwankpa for goods in classes 18 and 25, including bags, clothing and shoes.

Nwankpa appears to be the director of a now-dissolved clothing company called Shakara Enterprises Limited.

In April last year, Shakira filed an application to have the trademark declared invalid for all goods, relying on her own trademark ‘Shakira’ (UK trademark number 902870863) which was registered in 2004 for goods and services in classes 9, 16, 25 and 41.

In addition to claiming that there is a likelihood of confusion as the marks are highly similar and the goods/services are either identical or highly similar under section 5(2)(b) of the Trade Marks Act 1994, Shakira also alleged that use of the trademark would take unfair advantage of or be detrimental to distinctive character and/or reputation of her mark under section 5(3) and passing off.

Nwankpa, in defence, denied the claims and alleged that Shakara is a "place and a language spoken by some Nigerians but also a word coined by the legendary Afrobeat artist Fela Kuti and also the title of his 1972 album”.

He added that the word means either “pride” or “to show off” and he chose the name MyShakara for his online boutique selling products reflecting African traditions and culture.

On March 7, 2022, Nwankpa submitted the form required to surrender the contested mark. However, later that same month, Shakira confirmed she wished to continue with the invalidation.

Surrendering a trademark means that that mark can still be relied on up to the date of surrender. An invalidation has the effect of the trademark being treated as never having been registered.

Clare Boucher, on behalf of the IPO, found that some of the goods in class 25 were similar or identical. But, Boucher also concluded that many of the goods in class 18, such as backpacks and briefcases, were dissimilar.

"These goods all have an essentially utilitarian, rather than an aesthetic, function, namely that of containing or transporting other, sometimes very specific, items. I do not consider that they would be intended to be coordinated with items of clothing to present a particular image, or sold as such. In my view, these goods are dissimilar to the applicant’s clothing and headgear,” said Boucher.

Turning to a comparison of the trademarks, the IPO said that they were highly visually similar but that there was no conceptual similarity.

Boucher added: “I am not persuaded that the applicant has the exceptional level of fame with the relevant public, comparable to that of Pablo Picasso or of Lionel Messi in the earlier cases. Consequently, I do not consider that the earlier mark would immediately strike the average consumer of clothing as the name of a particular musical artist.”

Shakira succeeded under section 5(2)(b) in relation to all the goods in class 25 and the following goods in class 18: bags, bags made of imitation leather, bags made of leather, and Boston bags.

However, the IPO rejected her arguments under section 5(3) and passing off.

For the remaining goods in class 18, the trademark remained registered in respect of them, with effect until the date of its surrender.

“Both parties have enjoyed a roughly equal degree of success and so I order them to bear their own costs,” concluded Boucher.

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