Unfair Advantage Being Taken of Your Trade Mark? Don't Put Up With It

If you have spent time and money building up public recognition of your trade mark, you do not have to just stand by and watch others taking unfair advantage of your investment. In a case on point, a tea supplier saw off an attempt to use its brand name in the marketing of liquids used in vaping (e-liquids).

Selling its goods under the trade mark 'Yorkshire Gold', the supplier had achieved a substantial share of the UK tea market. After a manufacturer of flavoured e-liquids applied to the Comptroller-General of Patents, Designs and Trade Marks to register an identical mark, the supplier objected.

Ruling on the matter, a dispute resolution officer acting on behalf of the Comptroller-General found that tea and e-liquids are fundamentally dissimilar products. There was thus no possibility of ordinary consumers being confused by the use of the Yorkshire Gold name in connection with e-liquids.

The manufacturer's use of the name would also not amount to a misrepresentation or passing off. The goods being wholly different, it was unlikely that a substantial number of consumers would believe that the e-liquids were the tea producer's goods or that it had some sort of economic association with the manufacturer.

Arguments that the manufacturer's use of the name would dilute or tarnish the reputation of the producer's trade mark also fell on fallow ground. There was no evidence that the manufacturer wished to use the name to send a message to its potential customers that its e-liquids tasted like the producer's tea.

In refusing the manufacturer's application, however, the officer noted the possibility that it might develop a tea-flavoured e-liquid. It was on the face of it likely that the use of the Yorkshire Gold name on such a product would deliver a marketing advantage to the manufacturer through association with the producer's reputation. Such an advantage would be unfair in that it would derive from the producer's investment in promoting its brand.