A trade mark registry dispute involving the logo of sports brand Asics highlights some interesting issues in the differences between the UKIPO and EUIPO forums and the approach in trade mark oppositions to the assessment of similarity of marks and likelihood of confusion.   

Asics Corporation opposed the UK and EU trade mark applications for the following two marks in the name of World  Champion Imprint Club Limited.    

Asics based their opposition on this logo (which they evidenced they used separately from the word ASICS and was well known). The key ground of opposition was, because the marks were similar and applied for in respect of similar or identical goods, that there was a likelihood of confusion.

In the EU opposition, the marks were held to be dissimilar and so the opposition failed. In stark contrast (and perhaps surprisingly), in the UK opposition (full decision here) it was held that the marks were similar and that there was a likelihood of confusion. This did not mean that the consumer would confuse one brand for the other, but rather that consumers would assume the awards with which the applied for signs were used were co-branded or sponsored by Asics..

Can you see the transformed Asics “swirl” repeated in the “footballs”?  

When considering similarity, case law tells us that it is important to look at the overall impression of the marks being compared and not to artificially dissect the marks. Asics persuaded the UKIPO that their device is translated and duplicated in the other mark and that creates sufficient similarity.

Furthermore, when considering a likelihood of confusion it is important where the marks are not directly confused one for the other, to be able to articulate that there would none the less still be indirect confusion. This means seeing that the brands are not the same but assuming an economic connection between them.. I am not sure it was correct (without evidence) to conclude that sports brands co-brand by allowing their logo to be manipulated like this and so a consumer would, despite the manipulation, still assume this must be the Asics mark.  

These two cases also illustrate the need for specialist advice in each forum to best argue your case – for example we wonder if the UK case would have gone the same way if there had been an oral hearing to explore and challenge the perceptions of the marks and tests to be applied.

Stobbs has expertise at both the UK and EUIPO and works with many sports brands and personalities.

As an interesting final note - following the dispute (and the unsuccessful opposition at the EUIPO) Asics filed for a mirror version of their swirl logo as an EUTM.