1 November 2018Trademarks

UKIPO delivers trademark victory to ‘@pizza’ applicant

The UK Intellectual Property Office (IPO) yesterday rejected claims that trademark applications for ‘@pizza’ and a stylised ‘@’ symbol lack distinctiveness, delivering victory to a company called At Pizza.

A separate business, ImaPizza, had opposed the two UK applications in September 2017, claiming they lack distinctiveness and that ‘@pizza’ would be confused with its earlier EU mark for ‘&pizza’. On this point, the IPO did uphold the opposition for some goods and services.

The ‘@pizza’ mark (number 3,238,196) covers a range of goods and services in classes 25, 30, 32 and 43, including clothing, pizza dough, squashes and restaurant services. The stylised ‘@’ symbol (number 3,238,199) covers classes 25, 32, and 43..

Denying the claims against the ‘@’ application, At Pizza argued that because it is not seeking registration for social media or social networking goods or services—but instead for clothing, food, drink and catering services—the prevalence of the @ symbol in social media should not prevent its use for the claimed services.

It added that, for the ‘@pizza’ application, the combined ‘@’ symbol and the word ‘pizza’ as an indication of trade origin has a degree of distinctiveness. There would also be no likelihood of confusion with the earlier mark, At Pizza claimed.

But Mark King, who issued the decision for the IPO, rejected the opposition in respect of both applications on the ground of lack of distinctiveness.

For the ‘@’ application, he said the mark’s stylisation does endow it with some distinctive character. He added that while he is “conscious and astute to the consequence of registering descriptive marks … under the cover of a figurative ‘figleaf’ of distinctiveness”, this mark is not descriptive or devoid of distinctive character.

Assessing the ‘@pizza’ application, he added that while it is clear that the word pizza is descriptive for pizza and pizza related goods, “I must assess the application as a whole”, and therefore in the aggregate it is not devoid of distinctive character for goods either related or unrelated to pizza products.

On the confusion argument, King did grant ImaPizza a reprieve, saying that the ‘@pizza’ and ‘&pizza’ marks are visually similar to an above medium degree, and aurally and conceptually similar to a medium degree.

“I consider that once consumers are faced with the application on goods which are purchased on a frequent basis and then encounter another pizza mark, for non-pizza goods, which is also preceded by a symbol, they are likely to be confused,” he said, adding that indirect confusion also exists.

However, he refused the ‘@pizza’ application only in relation to class 30 (including sauces and salad dressings) and class 32 (such as squashes and slush drinks), and granted it for class 25 (including clothing) and class 30 (such as pizza).

According to King, as At Pizza had been more successful than ImaPizza, he awarded it £700 ($901) towards its costs.

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