FFW Defends Kent Reliance against RBS
OneSavings Bank Plc, which trades as Kent Reliance and is a long-standing client of the firm, applied to register two marks containing the acronym KRBS at the UK Intellectual Property Office. We were
OneSavings Bank Plc, which trades as Kent Reliance and is a long-standing client of the firm, applied to register two marks containing the acronym KRBS at the UK Intellectual Property Office. We were surprised to receive notice that the Royal Bank of Scotland had elected to oppose the applications on the basis of its rights in the mark RBS. Despite a protracted negotiation it became necessary to fight the matter to a conclusion. The firm represented OneSavings Bank at a hearing before the UK IPO and was successful in defeating RBS's oppositions in their entirety. The decision can be read here.
The Hearing Officer, George Salthouse, heavily criticised the evidence filed by RBS and accepted our submissions that the evidence, despite being voluminous, did not clearly show a reputation attributable to the opponent's use of the RBS mark. He found that RBS had failed to adequately prove its reputation in the mark RBS and was therefore not able to rely upon either enhanced distinctiveness nor on the extended protection available to marks with a reputation. In the absence of a proven reputation, RBS's case stood solely on its registered rights. Despite the opponent's argument that consumers were liable to 'swallow' the first letter of an acronym, a factor which would have had unfortunate consequences for its own acronym if correct, Mr Salthouse found that the marks were simply too dissimilar to give rise to a likelihood of confusion.
The case serves as an important reminder that reputation and goodwill cannot be taken for granted. It is required that parties prove the basis of their claims. Even a household name such as Royal Bank of Scotland needed to provide coherent and consistent evidence which is sufficient to satisfy the tests set out in case law.
The Hearing Officer, George Salthouse, heavily criticised the evidence filed by RBS and accepted our submissions that the evidence, despite being voluminous, did not clearly show a reputation attributable to the opponent's use of the RBS mark. He found that RBS had failed to adequately prove its reputation in the mark RBS and was therefore not able to rely upon either enhanced distinctiveness nor on the extended protection available to marks with a reputation. In the absence of a proven reputation, RBS's case stood solely on its registered rights. Despite the opponent's argument that consumers were liable to 'swallow' the first letter of an acronym, a factor which would have had unfortunate consequences for its own acronym if correct, Mr Salthouse found that the marks were simply too dissimilar to give rise to a likelihood of confusion.
The case serves as an important reminder that reputation and goodwill cannot be taken for granted. It is required that parties prove the basis of their claims. Even a household name such as Royal Bank of Scotland needed to provide coherent and consistent evidence which is sufficient to satisfy the tests set out in case law.