Background

This trade mark case involved an opposition based on Section 5(2)(b) as well as a claim for “bad faith” under Section 3(6).

The opposition was partially successful under the Section 5(2)(b) ground, but the opponent’s lack of evidence meant that they were unable to establish bad faith and this claim under Section 3(6) failed in its entirety.

Details

On 8 September 2022, the Turkish applicant MEMİŞOĞLU TARIM ÜRÜNLERİ TİCARET LİMİTED ŞİRKETİ filed a UK trade mark application to register the word mark TAT.

The application was made in respect of a wide range of services in Class 35, encompassing services such as “advertising”, “accounting”, “import-export agencies”, and retail services in connection with a diverse array of goods, ranging from denture polishes to water beds, and including a range of food items.

On 2 March 2022, the application was opposed by another Turkish entity. called TAT GIDA SANAYI ANONIM SIRKETI.

The opposition was based on Section 5(2)(b) of the UK Trade Marks Act, with the opponent claiming that the application for the word mark TAT was confusingly similar to, inter alia, its earlier trade mark registration for the “tat” logo (shown below) registered in the UK in respect of goods in Classes 29 and 30.

The opposition was also based on Section 3(6) of the UK Trade Marks Act, namely, that the application had been filed in “bad faith”.

Section 5(2)(b)

The opponent had initially relied on three earlier registrations, but as soon as proof of use was requested by the applicant it dropped its reliance on two of the earlier marks, relying on the stylised “tat” logo only.

The applicant filed their defence to the opposition and acknowledged that there was some similarity between the marks, but argued that as the services covered by their application were different to the goods covered by the opponent’s earlier mark, there could be no likelihood of confusion.

The applicant played no further role in the proceedings and it was left to the opponent to file their evidence, followed by written observations later in the proceedings and finally written submissions in lieu of a hearing.

In support of its case, the opponent argued that because the applicant’s Class 35 services related to the retail of goods that were identical to, or at least highly similar to, the opponent’s goods in Classes 29 and 30, the applicant’s services were similar because they concerned the trading of goods for which the earlier mark was registered.

For example, the application covered the services “The bringing together, for the benefit of others, a variety of goods, namely….dried pulses, soups, bouillon, processed olives, olive paste, milk and milk products, butter, edible oils, dried, preserved, frozen, cooked, smoked or salted fruits and vegetables, tomato paste, prepared nuts and dried fruits as snacks, hazelnut spreads and peanut butter” whereas the opponent’s earlier mark was registered in respect of the goods “dried pulses; soups; bouillon; processed olives; olive paste; milks of animal origin; milks of herbal origin; milk products; butter; Edible oils; Tomato paste; Hazelnut spreads; peanut butter”.

In a discussion on similarity, the Hearing Officer reminded us that it is not permissible to treat a mark registered for retail services for goods X as though the mark was actually registered for goods X.

Therefore, just because the application covered the retail of foodstuffs and the opponent’s earlier mark was registered in respect of the same foodstuffs, it did not necessarily mean that the applicant’s retail services were similar to the opponent’s goods.

A large proportion of the services covered by the application were deemed to be dissimilar to the opponent’s goods. However, as some services were considered similar in that they could be complementary to the respective goods, the hearing officer proceeded to consider the similarity between the marks.

Unsurprisingly, the applicant’s mark TAT was found to be visually “highly similar” to the opponent’s earlier logo mark because the same word TAT was common to both. By the same token, it was also considered to be aurally identical.

Interestingly, when considering the conceptual similarity between the marks, the hearing officer was of the view that the word may have different meanings to UK consumers and stated that “there may be some consumers who do not attribute it any meaning whatsoever meaning that it will be viewed as either a made-up for foreign language word”.  This conclusion is rather controversial because the word “TAT” is clearly defined in English language.

Likelihood of confusion

Unsurprisingly, and given that the word element of both marks consisted of no other word than “TAT”, the hearing officer found that there was a likelihood of both direct confusion and indirect confusion of the later mark with the opponent’s mark. The opposition brought under Section 5(2)(b) was partially successful.

Section 3(6)

Turning to the Section 3(6) ground, the opponent’s case was that the applicant had no bona fide intention to use the mark in respect of any services applied for.

This bold assertion was supported by just three pieces of evidence; the first piece of evidence was a letter from the UKIPO regarding an unsuccessful opposition brought by the applicant (the opponent in the case referred to in the letter). The opposition referred to in the letter was “withdrawn” due to no evidence having been filed.  The problem here was that the opposition evidence (filed by the applicant in the present case) was filed on 19 October 2022, which was after the filing date of the application currently under opposition in these proceedings, namely 8 September 2022.

For the purposes of bad faith, it is an applicant’s intention at the time of filing its application that is important. A letter from the UKIPO relating to an opposition that had been filed after the applicant had filed their contested application simply provided no information about the applicant’s intention on the date their application was filed.

The second item of evidence filed by the opponent was a selection of photographs in which the opponent claimed to show the applicant promoting its range of dried legumes, rice, and bulgar at a trade show. One photograph was dated 2010, one was dated 1998 and the other ten photographs were undated.

The third piece of evidence was a printout from the applicant’s website which, according to the opponent, showed the goods sold by the applicant. This evidence was undated and was taken from a “.com” website. As such,  the hearing officer was unable to conclude whether or not it was a website targeted at UK consumers.

The opponent argued that because the applicant did not file evidence to rebut the bad faith claim, the hearing officer must consider the applicant’s evidence to be a genuine and a complete illustration of the goods sold by the applicant. Unsurprisingly, the hearing officer rejected this argument, stating that filing unchallenged evidence does not mean that the opponent is bound to  succeed.

The hearing officer did comment that it would have been helpful if the applicant had filed some information regarding its intention to expand the product range beyond the goods currently sold. However, they had instead filed a simple counterstatement denying bad faith, which meant that the hearing officer had to rely on the opponent’s evidence alone.

Evidence consisting of a website printout and some photographs, most of which were undated, was not sufficient to establish what the applicant’s intentions were at the time they filed their application. The hearing officer acknowledged that businesses diversify over time and the lack of evidence at eh date when the application was filed was disadvantageous for the opponent.

In essence, filing a trade mark application to register a mark for services in Class 35, even though at the time of filing the applicant only sold goods belonging to Class 29, was not proof that the applicant had dishonest intentions at the time of filing. Had the hearing officer reached a different conclusion then it would have been extremely surprising.

Overall, and quite rightly, the evidence filed was not sufficient to establish the application had been filed in bad faith. The claim under Section 3(6) failed.

This decision is not at all surprising and reiterates that when making an allegation of bad faith in an opposition, it is important to file robust evidence to demonstrate an applicant’s intentions at the time the application was filed.