In a straightforward decision (BL O-184-20), the UK Intellectual Property Oﬃce (UKIPO) has upheld Opposition No 416330 by Supermac's (Holdings) Ltd against R7 Restaurants Ltd's UK Trademark Application No 3374053 for SUPERMAX for the vast majority of services covered by the application.
- The UKIPO has upheld Supermac's opposition against the registration of SUPERMAX based on two EUTM applications for SUPERMAC'S
- The hearing oﬃcer found a likelihood of confusion in light of the clear similarities between the marks and services
- The hearing oﬃcer issued an interim decision to be conﬁrmed only once the opponent achieves registration of either or both of its applications
The application covered a wide range of services related to the provision of food and beverages in Class 43, as did the two EU trademarks relied on by the opponent in the opposition:
- Application No 15442023 for SUPERMAC'S; and
- Application No 16583379:
The opposition was based on Section 5(2)(b) of the Trademarks Act 1994, which prevents registration of a trademark where:
It is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected [and] there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.
Neither party ﬁled evidence or requested a hearing, although the opponent ﬁled written submission in lieu of a hearing.
Decision under Section 5(2)(b)
The hearing oﬃcer had little trouble in concluding that the marks were similar, ﬁnding them visually highly similar and phonetically identical. Likewise, the vast majority of the applicant's services were found to be either identical or similar to the broad term "services for providing food and drink" as covered by the opponent's applications. The sole exception was for “consultancy services in the ﬁeld of food and drink catering”, which the hearing oﬃcer perceived as dissimilar. Taking into account the similarities between the services and the marks, the hearing oﬃcer concluded that there was a likelihood of direct confusion.
Interim decision issued
Because both of the prior rights relied on by the opponent were pending applications rather than registrations, the hearing oﬃcer issued an interim decision, to be conﬁrmed only once the opponent achieves registration of either or both of its applications. Notably, the hearing oﬃcer was careful to make sure he evaluated the opposition on the basis of both of the opponent's marks, in case only one of the two ultimately registered. The hearing oﬃcer also expressed a degree of surprise that the UKIPO had not suspended the opposition pending the registration of the opponent's application, pointing to a Tribunal Practice Note (of which he appeared to be the author) indicating that, in most cases, it would be the oﬃce's practice to do so.
Although it was a relatively straightforward decision for the hearing oﬃcer to ﬁnd a likelihood of confusion in light of the clear similarities between the respective marks and services, the case is notable for the hearing oﬃcer issuing an interim decision to be conﬁrmed only if and when the opponent's applications register. Both of the opponent's applications are themselves subject to opposition proceedings before the EUIPO so there is no guarantee that this decision will ultimately become ﬁnal. The case illustrates the perils of relying entirely on pending rights, although it is unclear if in this instance the opponent had any other rights it could have relied on.
This article first appeared on WTR Daily, part of World Trademark Review, in May 2020. For further information, please go to www.worldtrademarkreview.com.
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