In 2019, Skull Candy Inc, opposed an application for this trade mark in classes 9, 12 and 25. Skull Candy also cancelled a registration for this trade mark in classes 9, 12 and 25. Both rights were in the name of Kef Tesfaye.

The earlier rights relied upon by Skull Candy, Inc (“Skull Candy”) were for a trade mark covering classes 9, 18 and 25.

Skull Candy based the opposition on the following grounds:

• Section 5(2)(b) – the respective marks are similar and cover identical/similar goods or services and there is a likelihood of confusion.
• Section 5(3) - the respective marks are identical/similar and the later application/ takes an unfair advantage of or is detrimental to the distinctive character or repute of the earlier mark
• Section 5(4)(a) – passing off
• Section 3(6) the application/registration was filed in bad faith

Luckily for Skull Candy, the outcome was a good one. The opposition and the cancellation action were both successful on some but not all of the grounds relied upon. The evidence that Skull Candy submitted to show that it has an extensive reputation in the UK was important in the decision. The Hearing Officer did not hesitate in concluding that Skull Candy has a reputation for headphones and earphones in the UK.

Given the strength of Skull Candy’s reputation, then it may not be surprising that they were able to successfully oppose based on unfair advantage. The unfair advantage claim was successful against all goods in Key Tesfaye’s trade marks, i.e. including the dissimilar goods. This was on the basis that the consumer of skateboards, scooters etc. will also be a consumer of headphones and earphones, so the earlier reputed mark would still be called to mind for these goods.

However, Skull Candy was also successful based on likelihood of confusion between the marks (based on indirect confusion only) and passing off. The enhanced distinctive character of Skull Candy’s mark was an important factor in this outcome. Also, the Hearing Officer considered the use of a skull to promote and sell headphones to be an unusual and an arbitrary choice which weighed heavily in Skull Candy’s favour- the Hearing Officer considered the later mark would be considered a brand extension on this basis.

The bad faith claim was unsuccessful as no clear evidence of bad faith activity on the part of Kef Tesfaye was evidenced by Skull Candy. This is a reminder that bad faith is considered a serious allegation by the UKIPO and it must be distinctly proven by opponents. 

Overall, this decision is a reminder for brand owners who have carved a unique brand identity coupled with intensive use, that evidence of their repute and high consumer recognition in UK Opposition proceedings should afford their trade mark registration a broad scope of protection. It is recommended to have a record-keeping process so that when you need to prove use, it is easily accessible.