eBay have lost a trademark case against UKBAY and have been ordered to pay costs amounting to £560.00, although they can appeal the ruling.
SC ZuMedia Games applied to register UKBAY and eBay contested with their European Union trade mark number 11576865 (EBAY mark) and European Union trade mark number 12995833 (BAY mark).
“The contested mark comprises a device element and the string “UKBAY”. The device consists of concentric circles in the order red, black, white and red. The black circle has a line towards the bottom right. “UKBAY”, presented in capitals and in a bold font, is placed to the right of the device, with the abbreviation “UK” in red and “BAY” in black. I consider that the overall impression is dominated by the verbal element. Of the two verbal components, “BAY” is clearly the most distinctive, as “UK” will be perceived by the average UK consumer as indicating a geographical location. The device is not particularly distinctive and plays a lesser role to that of the verbal element but it remains a noticeable component in the overall impression.”
– UK Intellectual Property Office
The decision focused on the average consumer and if they would be likely to confuse the two trademarks. Focusing on visual and aural similarities, the UK was dismissed as likely to indicate the geographic region and the main focus of the case was on the BAY part of UKBAY. However, due to the stylistic differences, the circular pattern and the UK element, the UK Intellectual Property Office ruled against eBay. UKBAY won the right to use their mark for Class 35 Business management; business administration; office functions and Class 38 Telecommunications.
“The contested mark is unlikely to be mistaken for the earlier sign and there is no likelihood that “a substantial number” of the opponent’s customers or potential customers will be deceived, even where the field of activity is the same. Consequently, use of the contested mark would not constitute a misrepresentation to the public.”
– UK Intellectual Property Office
You can read the full Intellectual Property Office decision on their website.
3 Responses
Is that a typo, or does it really only amount to £560.00.
Yep…. £560.00 and not a penny more
Costs awarded were:
Considering the notice of opposition and preparing a counterstatement:£160
Considering the other party’s evidence: £400
Total: £560
Makes you laugh.
Whenever you see the big names and trademark “disagreements”, you always think in the million or hundreds of thousands.