28 September 2018Trademarks

UKIPO refuses Nokia trademark opposition and cancellation

The UK Intellectual Property Office (IPO) has ruled against Nokia in a consolidated trademark opposition and cancellation case involving a China-based bike share company.

Matthew Williams, on behalf of the IPO, handed down his decision on Tuesday, September 25.

In May 2017, OFO applied to register the figurative mark ‘ofo’ in yellow font, citing goods in classes 6, 9 and 12, and services in classes 39 and 42.

Nokia opposed the part of the application relating to class 9 for mobile phone and computer software goods. The company also opposed the applied-for IT services such as software development in class 42.

In addition, Nokia sought to cancel an earlier OFO mark registered under number 3,203,977. The earlier mark is the same as the applied-for mark and is registered for the same goods and services in three of the same classes as the application, 6, 9 and 39.

Nokia sought cancellation of the earlier mark for goods relating to class 9.

The telecoms company relied on its earlier European trademark for the word mark ‘OZO’, registered in 2016.

Nokia’s earlier mark is registered in classes 9, 41 and 42.

According to Nokia, the marks are highly similar because they share the first and second third letter and are only separated by the middle letter.

Nokia added that the colour and minimal stylisation of OFO’s two marks are insufficient to distinguish them with Nokia’s.

In addition, Nokia claimed that the goods and services are identical and/or similar and that this creates a likelihood of confusion for the relevant public.

OFO filed a counterstatement claiming that there is no conflict between the marks at issue.

However, OFO did admit that the goods in class 9 are identical to those on which Nokia relies and that there is “some similarity” between the applied-for services in class 42.

In his decision, Williams said that the marks must be assessed in their entirety instead of being dissected.

He said that while there is a “visual overlap” between the marks, the “difference in the middle letter in the marks is plain to see”.

Williams added that the ‘f’ element of OFO’s mark makes it stand out among the ‘o’ letters either side of it, whereas the ‘Z’ element in Nokia’s mark does not have the same effect.

Williams concluded that the marks are similar to a degree.

While he said that the lesser degree of similarity between the marks may be offset by the similarity of the goods, Williams explained that the average consumer is deemed reasonably well informed and observant. As a result, he said that the average consumer would distinguish between the marks and not mistake them for one another.

In his finding, Williams said that there is no likelihood of confusion and he ordered Nokia to pay OFO £650 ($850).

In a separate case, Nokia lost a trademark opposition against another application for ‘ofo’, filed by a company called Dongxia Datong (Beijing) Management and Consulting. Nokia was ordered to pay £500 ($650).

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