Appleyard Lees partner, solicitor and trade mark attorney Chris Hoole, assisted by senior associate and trade mark attorney Beverley Robinson, recently acted for Madd Gear Pty Ltd, in relation to consolidated invalidation and revocation proceedings concerning the confusingly similar mark MAD SKILLS, owned by CDS (Superstores International) Limited (The Range).
The UK IPO has now issued a decision confirming the success of the MADD and MADD GEAR brands in the UK, leading to the cancellation of The Range’s MAD SKILLS registration. Madd Gear Pty Ltd prevailed on all counts, and the decision is a useful reminder of the benefits of devising a robust strategic approach in registry proceedings and the importance of high-quality evidence.
Read the full decision here.
Background
Madd Gear Pty Ltd (Madd Gear), a company specialising in pro-scooters and action sports, filed an invalidity action (under s47 of the UK Trade Marks Act 1994) against CDS (Superstores International) Limited’s (CDS) mark (see below) , based on the following grounds:
i) A likelihood of confusion (section 5(2)(b))
ii) Reputation of an existing mark (s5(3)
iii) Passing off (s5(4)(a))
CDS’ mark
CDS is more commonly known under its trading name, The Range.
Madd Gear simultaneously filed a revocation action against the same mark based on the grounds of non-use (s46(1)(a) and s46(1)(b).
Madd Gear relied upon its earlier existing marks, MADD, MADD GEAR and MADD GEAR ACTION SPORTS.
Invalidity action
The marks relied upon by Madd Gear were subject to proof of use requirements which Madd Gear successfully met. The following evidence, submitted by Madd Gear, was deemed sufficient to establish that the earlier marks had been genuinely used during the relevant period:
i) significant UK and EU sales figures
ii) UK promotional spend
iii) evidence of participation in UK trade events and competitions
iv) evidence showing the mark ‘MADD’ being mentioned or promoted in UK magazines
v) continuity and length of use
vi) the extent and geographical spread of use covering both the UK and many EU countries
S5(2)(b) – Likelihood of confusion
The Registrar determined that there were sufficient visual, aural and conceptual similarities for a finding of indirect confusion.
It was held that the common elements of the marks, as well as the high level of distinctiveness of the Madd Gear’s marks, would inevitably confuse consumers into thinking that CDS’s mark was a variant mark or brand extension.
The application for invalidation under s5(2)(b) succeeded in relation to similar goods in Class 12 and 28, importantly including scooters, skates and games and playthings.
Section 5(3) – Reputation
The Registrar found that the evidence submitted by Madd Gear for proof of use, and enhanced distinctiveness, sufficiently demonstrated that they had achieved a strong reputation in the UK for scooters.
It was also held that the relevant public would make a link between the marks in relation to the same goods, for which a likelihood of confusion was found.
The invalidity action based on s5(3) succeeded in relation to the same goods, for which the invalidity under s5(2)(b) was successful.
Section 5(4)(a) – Passing off
The Registrar accepted that Madd Gear had the requisite goodwill in relation to scooters, and that a substantial number of Madd Gear’s customers would be misled into purchasing CDS’s goods, in the belief that they were sold by Madd Gear.
The action under s5(4) succeeded in relation to the same goods, and to the same extent as under s5(2)(b).
Revocation
Section 47 – non – use
Whilst the invalidity action dealt with the conflicting goods, Madd Gear was also successful in revoking all of the remaining goods on the grounds of non-use, resulting in the MAD SKILLS registration being revoked in its entirety, and CDS being ordered to pay Madd Gear’s costs.
