In August 2019 Natural Balance Foods Limited opposed the application to register two UK trade marks by Trek Bicycle Corporation. The result will be of interest to practitioners and brands who need to consider the complementarity of goods and services as the decision included an examination of the thought process the average consumer would go through when selecting nutritional supplements from a retail service.
In August 2017 Trek Bicycle Corporation (“Applicant”) applied to register the trade mark TREK and trade mark of a logo bearing a shield like device next to the word “TREK” in a stylised font, both in class 35, with the specification: retail services connected with the sale of nutritional supplements for human consumption, proteinaceous foodstuffs, sports drinks, energy drinks. The application was opposed by Natural Balance Foods Limited (“Opponent”) based on sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994. The Opponent relied on an earlier European Union Trade Mark which was a stylised logo of the word “TREK”, registered in classes 29 and 30 (the stylised mark that is used on the various protein and flapjack bars produced by the company).
The Opponent argued that the goods and services were similar, that there would be an assumption of an economic connection between the undertakings and that its used of its trade mark since 2006 would give rise to a claim in passing-off.
Consideration of relevant goods and services
It was held that the relationship between the goods and the retail service is sufficiently pronounced that a consumer would consider that the goods and retail service were offered by the same undertaking. The example used was that of a retail service provider selling its own brand products (paragraph 17).
The distinction between “retail services connected with the sale of, nutritional supplements for human consumption” and “retails services connected with the sale of sports drinks, energy drinks” was also considered. It was noted that the goods were not covered by the earlier mark, however this was not a sufficient reason to find that there was no similarity. It was held that there was a low degree of similarity services on the basis that the similar field of the retailed goods (aimed at providing a health and/or sports benefit) would lead consumers to regard them as complimentary (paragraph 18).
Similarity of the marks
It was noted in the decision that the word “Trek” is the only thing that contributes to the overall impression in the word mark and that in the mark which incorporates the shield device it is only the slightly more significant element. The word was considered to contribute most strongly to the overall impression. There was considered a high degree of visual similarity between the earlier mark and word mark and a medium degree of similarity between the earlier mark and the mark incorporating a shield device. These findings are not surprising when considering the marks.
In support of its claim, Trek was able to demonstrate significant level of evidence of goodwill that may associated with the mark. This included evidence of the percentage of sales revenue that is spent promoting its products, a report from Kantar, a leading research brand as well as references to sponsorship and awards.
The evidence provided by Natural Balance Foods was sufficient to establish its reputation. It was held at paragraph 29:
From the evidence provided I am satisfied that the TREK product, particularly for its protein bars, is a leading product and its use as such will have enhanced the level of distinctive character to a level of being reasonably high in distinctive character.
Likelihood of confusion
In relation to the word mark, it was held that, on the basis of the high level of visual similarity and the fact that they were conceptually and aurally identical. The earlier mark was also considered to have a reasonably high distinctive character on the use made of it in relation to protein bars. As a result the average consumer was considered to assume that the product is an own brand of the service provider in the specialist environment in which it exists. They may mistake one mark for the other, but if they did it would be on the assumption that there was simply a brand variant (paragraph 32).
The likelihood of confusion in relation to the second applied for mark, which incorporated the shield design, was considered separately and it was found that there is a likelihood of confusion again on the basis that the average consumer may consider the TREK Brand to be an updated or a brand variant (Paragraph 34).
As a result the opposition was successful.