In a recent case, the short-form video hosting giant TikTok opposed the application of the trade mark

The application, filed by Li Xinghe on 30th April 2022, covered a somewhat eclectic group of goods in classes 3, 21, 24, 25 and 28, ranging from skincare products to tableware. TikTok opposed this application on the basis of four earlier rights (all for the mark TIKTOK in varying forms), relying on s5(2)(b) and s5(3) of the Trade Marks Act 1994.

There are a few key takeaways. To succeed on likelihood of confusion, it is not enough to say similar marks plus similar goods equals confusion. Evidence must also be presented to demonstrate a vast reputation. To show a link, it is necessary to demonstrate the proximity of the goods/services with a proven reputation.

Blake Robinson has written an analysis of the case for CITMA. You can read the full article here.