1 June 2018Trademarks

Sky comes out on top in TalkTalk trademark battle

Telecoms company Sky has come away mostly unscathed from an opposition that industry rival TalkTalk had filed against a trademark application for ‘Talk Shield’.

On Wednesday, May 30, the UK Intellectual Property Office (IPO) rejected TalkTalk’s opposition against the word mark in classes 9, 35, 41 and 42, but accepted it in class 38. The total list of goods and services applied for reached 52 pages in the decision.

TalkTalk originally opposed the mark on four grounds, but after it filed evidence to support only two of those, the case ultimately rested on whether ‘Talk Shield’ is descriptive of the goods and services cited and whether it would cause confusion with TalkTalk’s EU trademarks.

The marks cited were: ‘talktalk’ (15,218,928); ‘TalkTalk’ (3,141,240); and two composite marks (3,213,875 and 3,127,310), both of which contain the word ‘TalkSafe’ beneath a grey circle in which sits a white shield that houses an image of a telephone.

Sky filed a counter-statement denying TalkTalk’s allegations, before the IPO heard the matter on May 10.

In her decision, hearing officer Judi Pike confined her analysis of descriptiveness to the goods and services TalkTalk had specified because it was unclear whether the company opposed all goods and services. These cited goods and services included call screening, barring and blocking software; call blocker devices, call blocker services; and call barring services.

Rejecting the claims of descriptiveness, Pike said she believes ‘Talk Shield’ to consist of two words which, together, create a distinctive impression that is more than the mere sum of the two words, concluding that: “The mark is no more than allusive of the goods and services which provide protection for or against ‘talk’.”

In assessing the next prong of confusion, Pike said she should review the word marks and the composite marks separately.

She started with the word marks, finding that they have no or little conceptual similarity, are visually similar to a low degree, and have “very different overall impressions”.

With the composite marks, Pike noted that TalkTalk opposed ‘Talk Shield’ only on the basis of class 38 and that Sky accepted the goods and services to be highly similar or identical to those of TalkTalk. Class 38 covers goods and services including telecommunications; cable television broadcasting; cellular telephone communication; and communications by computer terminals.

Pike found that the marks in this case have only a low degree of visual similarity and a low to medium degree of aural similarity, but that they have a high degree of conceptual similarity.

She said Sky’s ‘Talk Shield’ mark alludes to services which provide protection for or against ‘talk’.

“The words in the opponent’s mark have a similar allusion to services which keep ‘talk’ safe, ie, protect ‘talk’. A shield protects. Further, the earlier marks both contain a shield device, upon which the telephone apparatus (handset or telephone) appears. The shield device reinforces the idea of safety and the telephone apparatus reinforces the idea of talk,” Pike added.

She therefore said indirect confusion would exist, but awarded Sky costs of £1,550 ($2,000), offset to take into account TalkTalk’s partial success.

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