The Pets Factor

Background

On 29 June 2017, TV format creator Mark Duffy decided to apply for an amusing trade mark under the name of “The Pets Factor” (the Application), presumably unaware of the furore that was shortly to be generated by the well-known patron of a similar brand.

The application proceeded to publication on 21 July 2017 where it was summarily opposed by Fremantlemedia Limited and Simco (the Opponents), both companies tied to the TV judge Simon Cowell and his flagship series, “The X Factor”.

The disputed application covered Class 9 (DVDs and software) and Class 41 (education and entertainment services) so it is not hard to see why Mr Cowell might have had an objection to the mark becoming registered. His lawyers filed objections under three grounds of the Trade Marks Act 1994 (the Act):

• 5(2)(b) – likelihood of confusion with existing “The X Factor” trade marks;
• 5(4)(a) – misrepresentation and passing off of another brand; and
• 5(3) – damage to the same in the form of unfair advantage and tarnishing.

Legal test

The above grounds represent registered and unregistered rights in “The X Factor” brand. The applicant filed a counterstatement denying these grounds and even questioning why “The X Factor” had allowed to be registered in the first place (being as it was, an already known term to the public which would usually preclude it from being registrable as a trade mark).

In terms of the first ground, the Tribunal ruled that, despite a medium level of similarity between the Application and the existing “The X Factor” trade marks, there was insufficient evidence to show that members of the public would assume the Application actually belonged to the Opponents or was their responsibility.

In terms of the second ground, the Tribunal took a similar stance and stated that whilst, again there was similarity between the marks, there was insufficient evidence to meet the legal test for actual misrepresentation taking place (which is a high bar).

At this point, the Opponents may have been excused for being slightly concerned for the direction of the case. Nonetheless, the Tribunal then turned to the final ground under s.5(2)(b) of the Act: this states that a trade mark which is identical or similar to an earlier trade mark should not be registered if it would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.

Outcome

Fortunately for the Opponents, here the Tribunal agreed that there would be an unfair advantage given by allowing the Application to succeed. The Tribunal found that it was likely the relevant public would form a mental link between the two brands (in particular given the nature of the goods applied for). As a result, the Application was refused for Class 41 (entertainment services) entirely and partially for certain Class 9 goods (such as DVDs) but not others (such as computer software), as it could not be said that an unfair advantage would be established for these goods.

Briffa comment

The outcome in this case goes to show the importance of a nuanced approach to trade mark opposition proceedings and the need to appoint suitably experienced lawyers to handle your case. Taken at face value, many may have expected the opposition to succeed on the slightly more obvious opposition grounds and the ruling underscores the importance of managing your registered and unregistered rights carefully.

We have discussed some of the other ways in which trade marks can be a valuable asset in the past: take a look at some of our previous blogs here.

At Briffa, the team benefits from over 25 years’ experience filing trade marks in in nearly every jurisdiction in the world and we have particular expertise in handling trade mark disputes before the UK and EU courts.

Written by Tom Synott, Solicitor