6 November 2020TrademarksMuireann Bolger

University of Law in partial TM win at UKIPO

The University of Law has succeeded in blocking parts of a trademark application by a Chinese provider of legal and corporate risk management services at the UK Intellectual Property Office (IPO), on Tuesday, November 3.

On 3 December 2019, Xiaobin Zhao filed an application for the mark ‘ULEGAL’ with the IPO, for goods and services including: the maintenance of computer software; computer system design; creating and maintaining websites for others; software as a service; computer programming; and providing search engines for the internet.

The University of Law filed a fast track opposition in March 2019, arguing the mark was too similar with its own earlier mark, ‘ULaw’ which would result in a likelihood of confusion.

The university stated that: “The parties’ marks are closely similar, visually, aurally and conceptually. Both marks start with the letter ‘U’ and the elements ‘LAW’ and ‘LEGAL’ are linked.”

Zhao filed a counterstatement in which he denied a likelihood of confusion on the basis that the marks at issue were not similar, and the parties’ goods and services were “for the most part” different.

Zhao stated that “in particular, the marks ULAW and ULEGAL are not similar. The endings of the marks “LAW” and “LEGAL” are different visually and phonetically. The opponent’s mark ULAW is a shorter word consisting of two syllables as against the three syllables of ULEGAL”.

The IPO found that given that the marks were fairly short, and the first two letters were identical, that there was “a medium degree of visual and aural similarity between them”.

It stated that “taking into account the common elements between the mark... the fact that these letters appear at the beginning of the marks, the very high degree of conceptual similarity, and bearing in mind the concept of imperfect recollection”, that it was likely “that the average consumer will mistake one mark for the other”, resulting in a likelihood of direct and indirect confusion.

It further added that,“there may be an overlap in user and trade channels”, and they can be “considered complementary in that computer software is important for services relating to computer software (and vice versa) to the extent that it is reasonable that customers may think that one undertaking provides both the goods and the services”.

But it did not agree that the applicant’s services were complementary to computer software “to the extent that consumers would believe the responsibility for the goods and services lies with the same undertaking”.

It also held that having considered the factors outlined in case law that there was no other point of similarity with the opponent’s specification and “no similarity” between Zhao’s application in relation to “technical writing”, “packaging design”, “consultancy in the design and development of computer hardware” and “IT consultancy”.

The IPO ruled that the university’s opposition was partially successful, refusing the application for goods including the maintenance of computer software; computer system design; creating and maintaining web sites for others; software as a service; computer programming; and providing search engines for the internet.

However, it held that Zhao’s application may proceed for the services including: packaging design; consultancy in the design and development of computer hardware; technical writing  and Information technology consultancy.

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