Background  

AT Innovations (Scotland) LLP (‘Applicant’) applied for PINK SODA in classes 5, 29 and 30 for dietary and nutritional supplements, snack products, cereal and protein bars. JD Sports Fashion Plc (Opponent) filed an opposition based on their earlier right PINK SODA in class 25 for clothing under Sections 5(3) and 5(4)(a) of the Trade Marks Act 1994 ("TMA"). The Opponent succeeded, but only in relation to Section 5(3).   

The Decision  

Whilst not a groundbreaking case at the United Kingdom Intellectual Property Office (“UKIPO”), the decision is a good reminder of certain elements when relying on a Section 5(3) and 5(4)(a) TMA claim. Specifically, this decision addressed proof of use and link (for Section 5(3)) and the misrepresentation assessment under Section 5(4)(a). Each of the main points are outlined below:  

1. Proof of use 

The relevant period was held to be 2 November 2016 to 1 November 2021. With the opponent bearing the onus to prove genuine use, numerous exhibits were submitted to evidence use in the UK of PINK SODA on sports and fitness clothing for women. Despite use of the mark in various forms and not as registered, such as ‘PINK SODA SPORT’,  the Hearing Officer held that use of all these variations was sufficient to constitute use of the mark as registered and the evidence presented satisfied the requirement for genuine use.   

2. Link

A ‘reasonable’ reputation was found in the Opponent’s earlier mark insofar as it concerned ‘women’s sports and fitness clothing’, with the relevant public held to be the general public – including existing and potential consumers.  

A point of particular interest was the Hearing Officer’s assessment of “link”. Whilst it was held that there was no ‘likelihood of confusion’ between the marks, it was held that a ‘mental link’ was found to be created in the minds of the consumer given a) the relevant public was the same and b) the earlier mark was held to enjoy a medium degree of inherent distinctiveness, which was heightened by its established genuine use. This reminds us that whilst goods and services may not be found identical or similar in a likelihood of confusion assessment , there may yet be a link under Section 5(3).  

As to the unfair advantage limb, a perceived association between the marks was held to contribute to the heightened familiarity of the Applicant’s mark. As this would result in greater custom for the Applicant than if such association was not made – with no financial remuneration to the Opponent as owner of that reputation - this constituted unfair advantage.  

 3. Misrepresentation  

As many readers are aware, Section 5(4)(a) is rooted in three pillars of Passing Off – goodwill, misrepresentation, and damage to the established goodwill (the Jiff lemon “holy trinity”).  

The Hearing Officer found that the Opponent had goodwill in the earlier PINK SODA mark in relation to women’s sports and fitness clothing. However, there was no finding on misrepresentation as there must be an assumption that there is a connection between the entities – mere wonderment by the consumer is insufficient; they must be deceived into purchasing the Applicant’s goods thinking they are the Opponent’s. It was ultimately held that no such assumption existed on the facts due to the variance in the respective fields of activity, and hence there was not a misrepresentation by the Applicant. Accordingly, the Section 5(4)(a) claim failed.  

Take-homes

This case is a good illustration of a scenario where there may not be a likelihood of confusion, but there may still be a successful claim under Section 5(3), provided there is a ‘link’. Furthermore, misrepresentation (not being the same as ‘link’ under Section 5(3)), is assessed differently, so it is important to address this in any early strategy assessments.