The Dark Side: ABT Merchandising v Brand Protection

Class 25 was opposed by ABT Merchandising Limited (the opponent) on the basis of:

• Section 3(1)(a) Trade Marks Act (TMA) – that the mark is a well-recognised slogan, commonly used on merchandise, and is incapable of distinguishing the goods of one undertaking from those of other undertakings.
• Section 3(1)(b) TMA – that the mark consists exclusively of a well-recognised slogan from Star Wars, commonly used as a "tongue-in-cheek fun way" to encourage misbehaviour, and is incapable of distinguishing the goods of one undertaking from those of other undertakings.
• Section 3(6) TMA – that the mark has been applied for in bad faith, as the applicant intends to unlawfully prevent other clothing companies from using a well-known slogan by virtue of a registration, for example by alleging trade mark infringement using straightforward de-listing mechanisms on eBay and Amazon, which the applicant had previously done in relation to other marks.

The applicant strikes back

Brand Protection's counterstatement noted that whilst "Come To The Dark Side" was inspired by Star Wars, Brand Protection was the one that created, popularised and built a reputation in a series of parody designs, the first of which was "Come To The Dark Side We Have Cookies". The design on clothes had received positive feedback on sales platforms, equating to over 6,000 sales, and the concept had been extended to other specific interests such as cycling and guitars. The applicant submitted that the brand proved so popular that others started copying them and claimed that ABT Merchandising was simply adopting a malicious approach after Brand Protection removed one of the opponent's eBay listings.

Looking at the evidence

ABT Merchandising filed evidence that their t-shirts sold on eBay, which constituted "mash-ups" of current trends, contained artwork which aligned with trade marks filed by the applicant. The evidence showed that their use on eBay predated the applicant's trade marks and ABT Merchandising noted that a number of their clothing items had been delisted on eBay. ABT Merchandising claimed that the evidence proved Brand Protection was deliberately taking the opponent's artwork; however none of the evidence filed related to the trade mark in question.

Copying was denied by Brand Protection along with filing trade marks to deliberately cause damage to the ABT Merchandising's business. Brand Protection filed evidence that they license and design numerous t-shirt designs and that ABT Merchandising was copying Brand Protection's work, however the latter evidence contained text that was too small to read. The applicant noted they intended to include woven damask labels sewn into the neck and hem/sleeve to assist in distinguishing their products from copies.

Lack of [bad] faith disturbing?

The Hearing Officer considered that the first ground under section 3(1)(a) TMA failed as the mark was not incapable of distinguishing any goods.

Regarding section 3(1)(b), the UKIPO looked at whether use of the mark as a longer set of words across the front of t-shirts was notional and fair use and noted that there was no evidence of use on neck labels to have educated the relevant public that the mark is a trade mark. The Hearing Officer held that Brand Protection's intended use of words was not as applied for and, absent use as a trade mark, the iconic Star Wars phrase alone would unlikely be viewed as indicating the origin of garments apt to carry phrases, statements or slogans. Thus the mark was refused in relation to goods such as t-shirts and women's clothing but also for goods like bath sandals and sweat-absorbent underclothing. The mark was however deemed distinctive in relation to the remaining goods which included shower caps (yet bathing caps was refused) and slips (undergarments), despite underwear being refused.

In relation to bad faith, the opponent's argument focused on the fact that Brand Protection would have a statutory monopoly in a commonly used statement or slogan and thus could remove online listings of third-parties bearing the words. The UKIPO held this was not a sufficient basis for bad faith as otherwise the ground could be used whenever an applicant seeks to register (and thus gain a monopoly over) a non-distinctive mark.

The mark was therefore allowed to proceed to registration for classes 14 and 21, which were not opposed, and for some goods in class 25.

In short

This case sets out goods in class 25 likely to be considered apt to carry slogans in the UK and serves as a reminder to file trade marks in the form in which they will be used, particularly where the phrase may be considered non-distinctive in relation to such goods. Perhaps unsurprisingly, the ground of bad faith cannot be used simply to oppose non-distinctive marks.

Case details at a glance

Jurisdiction: United Kingdom
Decision level: UKIPO
Parties: ABT Merchandising Limited v Brand Protection Limited
Date: 08 March 2017
Citation: O-106-17
Decision: http://dycip.com/O-106-17