TiVo enjoys ‘limited success’ in UKIPO TM appeal
TiVo has had a “limited measure of success” in its appeal against a failed trademark opposition at the UK Intellectual Property Office (IPO).
The IPO delivered its decision on Friday, March 16, referring the matter back to a hearing officer for reassessment.
In 2016, Vivo International filed a trademark application for the word ‘Vivo’ in class 41, to cover the production and distribution of TV shows and films.
The application was opposed by entertainment company TiVo, which owns EU trademarks (EUTM) ‘TiVo’ (number 1,006,014) and ‘TIVO’ (number 8,493,587) in multiple classes, registered in 2001 and 2010 respectively.
In its opposition, TiVo relied on classes 38 and 41, both of which are covered by its EUTMs. Class 38 includes subscription TV services and the transmission of cable services, and class 41 includes entertainment services and interactive TV programming.
In response, Vivo requested proof of use of TiVo’s marks. TiVo’s solicitor said that the entertainment company’s services are provided in the UK through an exclusive partnership with Virgin Media.
Under the agreement, Virgin Media customers receive a set-top TV box and Virgin Media distributes TiVo’s products under TiVo’s registered mark, according to the solicitor. However, in the previous decision which was being appealed against, hearing officer Ann Corbett noted that no evidence of any exclusive partnership had been submitted.
Though there have been multiple references to TiVo in connection with Virgin Media in the media there is no evidence of the marks’ use by either TiVo or Virgin Media, said Corbett.
They added that some of the information contained in the articles was “contradictory” in relation to which services are provided by TiVo, via Virgin Media.
TiVo’s opposition was rejected by Corbett, as the entertainment company had failed to show genuine use of either mark.
TiVo appealed against the decision to the IPO, arguing that there had been “adequate evidence” to show genuine use of the marks. It also asked to file further evidence: a witness statement from an employee of Rovi, which acquired TiVo in 2016.
The statement, which was filed after TiVo submitted its grounds of appeal, noted that any inadequacy in the evidence initially submitted was due to the company’s reorganisation.
In its decision, the IPO said that it was “extremely unsatisfactory” that the statement was not served with the grounds of appeal, and no explanation for the late submission was given.
“It plainly could have been obtained with reasonable diligence for the hearing,” said Amanda Michaels, on behalf of the IPO.
TiVo could have sought an extension if disturbed by the reorganisation, the IPO said, determining that TiVo was not able to rely on the additional evidence.
TiVo’s grounds of appeal were also “sketchy in the extreme” in so far as it described TiVo’s complaints against Corbett’s decision, the IPO added.
The IPO said that TiVo’s solicitor’s statement was not supported by “solid and specific” evidence. Corbett was therefore correct to find that there was no evidence of any set-top boxes, supplied by Virgin Media, featuring the TiVo mark.
Overall, the IPO concluded that Corbett was correct to find no proof of use for classes 35, 38, and 41, but should have found use of TiVio’s mark in relation to software in class 9.
As the earlier marks were used “to some extent”, the opposition was returned to the IPO for another hearing officer to consider the application.
The IPO concluded that TiVo had a “limited measure of success” in the appeal, and that it is the responsibility of the hearing officer to assess whether there is sufficient evidence to uphold the opposition.
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