SUPERMAC'S v SUPERMAX: the perils of relying on pending rights in oppositions

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

Background

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.

Comment

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.