Victory for ASICS in opposition against 'swirls' mark

Summary

• ASICS filed partial oppositions against two trade mark applications which included three 'swirls', together resembling a football device
• The UKIPO found that the distinctiveness of ASICS' swirl logo was enhanced to a "very high degree" due to the brand's popularity and reputation
• The oppositions were successful for all of the goods and services opposed by ASICS

In a recent opposition decision (O/949/22), the UKIPO  has found in favour of the opponent, Kabushiki Kaisha Asics (ASICS), despite the marks applied for (on the left below) having only a low degree of verbal similarity, no aural similarity and a conceptual similarity only with regards to the 'swirl' elements to the prior mark (on the right) below:

 

Background

In June 2020, World Champion Imprint Club Limited filed two UK trade mark applications for marks with device elements incorporating three swirls, arranged to  look like a football, in Classes 3, 9, 14, 16, 18, 21, 25, 28, 35, 38 and 41. Both applications were accepted and subsequently partially opposed by ASICS in respect of the goods and services in Classes 18, 25, 28, 35 and 41. The oppositions were was based on Sections 5(2)(b) (likelihood of confusion with ASICS' earlier marks), 5(3) (unfair advantage or detriment to the distinctive character or repute of ASICS' earlier marks) and 5(4)(a) (use of the marks applied for would infringe ASICS' unregistered rights) of the Trade Marks Act 1994:

Decision

The oppositions were successful against all of the goods and services they were directed at. ASICS' position was greatly helped by a finding that the distinctiveness of the ASICS swirl logo was enhanced to a high degree thorugh use. It was noted that ASICS is a "leading manufacturer of sports goods" and has previously "sponsored events like the Olympic Games and professional athletes".

In comparing the marks, the appointed person noted that each swirl in the marks applied for was similar to a fairly high degree to the ASICS swirl logo. However, when taking into account the verbal elements of the marks applied for and arrangement of the swirls to resemble a football, the overall degree of visual similarity was low. There was no aural similarity and a conceptual similarity only due to the swirls. Although the marks were not considered similar enough to be confused with one another, the appointed person considered that there may be indirect confusion as consumers were likley to view the applicant's mark as made up of three of the opponent's marks arranged into a football shape. The oppositions therefore succeeded under s 5(2)(b) for all goods and services considered similar to those covered by ASICS' registrations.

The oppositions succeeded under 5(3) for all goods and services opposed, including those held to be dissmilar to those covered by ASICS' registrations, because the appointed person considered that concurrent use of the applicant’s marks is likely to result in the applicant benefitting from the opponent’s logo’s power of attraction, reputation and prestige and exploiting the marketing effort made by the opponent, without paying any financial compensation.

Finally, the oppositions also succeeded against all goods and services opposed under s 5(4) on the basis that ASICS had significant goodwill in its logo, use of the marks applied for would convey to consumers an association with ASICS (a misrepresentation), and that such misrepresentation would damage the opponent’s goodwill.

Comment

This decision makes clear that there is a huge advantage to opponents if they are able to establish that their mark has acquired enhanced distinctiveness through use. This makes a finding of likelihood of confusion more likely, even when the similarites between the respective marks are only modest, and also opens up the prospect of succeeding against dissimilar goods and services under s 5(3). Of course, ASICS is a very well known brand and the swirl is an iconic logo, so there may be a limited range of traders able to reap similar rewards.

With thanks to Trainee Solicitor Andre Demetriou, co-author of this article.