11 January 2021Trademarks

UKIPO denies VW’s bid to stop ‘Multibus’ trademark

The UK Intellectual Property Office (IPO) has upheld an appeal against a decision made in trademark opposition proceedings which had previously gone in Volkswagen’s favour.

The appellate tribunal’s determination, dated January 3, said that the IPO’s initial decision was “plainly wrong”.

In October 2018 Terence Patrick O’Halloran, an individual, applied to register the trademark ‘Multibus’ in respect of vehicles, vehicle bodies, conveyances, and vehicles for locomotion in class 12.

German automotive company Volkswagen opposed the application on the basis of its existing internationally registered trademark for ‘Multivan’ (IR number 1136520), which conferred protection in the European Union (EU) from October 2013.

The ‘Multivan’ mark covers motorised vehicles, vehicle bodies, motorbuses, trucks, caravans, tractors, motorcycles, omnibuses, and electric motors in class 12.

In December 2019, the IPO said that Volkswagen’s evidence of genuine use of its asserted ‘Multivan’ mark was “inadequate in many respects”. However, it still held that Volkswagen had established genuine use of the mark in respect of certain vehicle categories.

The IPO found that Volkswagen’s evidence did not establish use of the ‘Multivan’ mark in the UK; it was instead limited to parts of mainland Europe, and Volkswagen had no basis for asserting any distinctiveness of the ‘Multivan’ trademark in the UK.

Overall, the IPO determined that the shared element of ‘Multi’ at the beginning of both marks and the fact that they cover the same categories of goods means the average consumer will believe that goods sold under the ‘Multibus’ mark are economically linked to those sold under the ‘Multivan’ mark.

The IPO upheld Volkswagen’s opposition and ordered O’Halloran to pay £800 ($1,085) towards the automotive company’s costs.

O’Halloran appealed against the decision and, earlier this month, the appellate tribunal said that the IPO’s determination—which was based on a finding of a likelihood of indirect confusion—was “wrong”.

“The average consumer can be expected to have come across the word ‘multi’ used as a prefix to a noun in hundreds of words, including in trademarks, for the same or similar purposes,” the appellate tribunal said.

It added: “It would therefore be folly for a consumer to conclude simply from this similarity that the marks indicate a common trade origin.”

The appellate tribunal suggested that the situation may be different if the ‘Multivan’ mark had a high degree of reputation; for example, if it was part of a series of marks which included the word ‘multi’.

But in this case, it found “no such reputation and no other good reason to make the assumption required for confusion to occur”.

The appellate tribunal concluded that the earlier decision was “well outside the bounds of what a reasonable tribunal acting reasonable could have decided on the facts of this case”, and directed that the ‘Multivan’ trademark proceed to grant.

It provided for the award of costs made against O’Halloran in the initial hearing to be set aside and instructed Volkswagen to pay £500 ($678) towards O’Halloran’s costs and expenses.

The IPO announced last week that it had closed its London office to all but critical workers, amid a new lockdown to deal with spiking COVID-19 infections in England.

Customers cannot file applications in person at the London office, where no paperwork will be processed until a review of the restrictions on February 18.

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