When is a Golf trolley not a golf trolley? When it’s a (VW) Golf trolley. A recent UKIPO decision in an opposition by Volkswagen to a trade mark application for a golf cart brand highlights some interesting issues and subtleties in opposition assessments.
The UKIPO recently issued a decision in an opposition against a trade mark application for the sign for golf trolleys and other goods in class 12. The full list of terms was:
“Golf trolleys; Motorized golf trolleys; Trolleys; Trolleys [vehicles]; Electric trolley buses; Two-wheeled trolleys; Trolleys [mobile carts]; General purpose trolley; Electrically powered trolleys; General purpose trolleys; Golf carts [vehicles]; Golf cars [vehicles]; Motorized golf carts; Motorized golf carts [vehicles].”
As you may imagine, Volkswagen have registered rights in the name GOLF for vehicles and related goods in class 12.
I imagine this was a technical opposition by Volkswagen to the terms that were not specifically golf related.
Volkswagen’s GOLF prior registration covered the following in class 12:
“Vehicles (except golf carts); parts of vehicles; apparatus for locomotion by land, air or water.”
Volkswagen’s opposition was based on a similar mark for identical/similar goods leading to a likelihood of confusion. No evidence was filed or reputation claimed. Neither was Volkswagen put to proof of use of their GOLF right.
Interestingly, despite the explicit exclusion of golf carts from the “vehicles” term in their GOLF registration, the unqualified “apparatus for locomotion by land, air or water” term was held by the UKIPO to cover all forms of vehicle including golf carts and so was held to cover all of the applied for goods identically.
However the UKIPO concluded, despite sharing the same first element GOLF and considering the position for identical goods, that the GOLF element was so weak that no consumer would be confused or assume a connection between the two brands.
This makes perfect sense where the goods are golf related. But I feel the UKIPO erred here in respect of the non-golf specific terms.
Volkswagen were in effect held to have unchallenged rights in the word GOLF for non-golf specific terms such as “general purpose trolleys”. Not all general purpose trolleys are for golf, in fact if you said trolley to most people, without priming them by mentioning the sport, I think they would think of the things that float in English rivers or that you use at the airport or do the tea round with at the office. For those non-golf products, the word golf is not “weak”. For those consumers, if they had used a trolley branded GOLF, and then saw a trolley branded GOLFCAD I think there is a good case, even where not mistaking one brand for the other, they would think they were connected (for example, GOLFCAD was a brand extension of the GOLF trolley brand). Whilst the general term “trolley” also encompasses golf trolleys, I think there is a valid and not insubstantial set of consumers of trolleys that don’t think of the sport and their perceptions should have been taken into account here. This would not have changed the result against the bulk of the goods applied for and not implied Volkswagen can stop use of a GOLF- brand for golf products, but it would have more accurately reflected the scope of the rights (at least at registry level).
I also think evidence, both of the nature of the goods in question, and of the fame of the GOLF brand, would have helped as would have being able to explore these subtle issues in an oral hearing.
Stobbs has vast expertise at the UKIPO in relation to trade mark oppositions.
As a side note, before writing this post I did not know that the car model name GOLF has nothing to do with the sport and is in fact named after a wind, namely the Gulf stream (and the POLO is named after the polar wind – so not the sport either).