In a recent UKIPO opposition decision, the UKIPO has confirmed that the marks KINKEDIN and LINKEDIN were not confusingly similar. Based on the impressive reputation held by the Opponent, LinkedIn, the UKIPO upheld the opposition based on its section 5(3) ground based on unfair advantage taken its reputation.
At first glance, the marks LINKEDIN and KINKEDIN may appear to be similar; indeed, there is only a single letter different across the two marks, and the pronunciation is virtually identical. That said, upon reflection, it is more difficult than first considered to demonstrate that the consumer may be confused when faced with the two marks used in commerce, particularly when not presented side by side. Such was the finding of the UKIPO, which confirmed that the conceptual dissimilarity caused by the first letter was sufficient to avoid a likelihood of confusion being found.
As is perhaps unsurprising, the business-networking site LinkedIn was able to demonstrate a reputation in its earlier mark, and its reputation was such that a link was found with the applicant’s later filed mark KINKEDIN. As a result of the strength of the reputation, as well as the sexual nature of the services for which the applied for mark was being used, the UKIPO found that a possibility of damage existed. In addition, as the Applicant had referenced the Opponent’s offering on its own site, calling itself ‘like LinkedIn… nah… not really’, an unfair marketing advantage was found to have been taken.
One might speculate, based on a number of recent UKIPO decisions, that a conceptual dissimilarity may go further in preventing an opposition being successful on the grounds of a likelihood of confusion, than it will assist oppositions being successful on this ground. As such, conceptual similarity might be a better shield than sword in relation to opposition proceedings; it is more likely to protect you from your mark being considered similar to another than it is to be the deciding factor in a finding of similarity with another mark.
Whist this decision does not deviate from established principles by which opposition proceedings are governed, it does serve as a reminder that when there is evidence of intentional allusion to an earlier mark, particularly where the goods and services being offered may be considered unsavoury, a finding of unfair advantage is more likely to be reached.