Decision Nº O/002/22 from Intellectual Property Office - (Trade market), 4 January 2022
| Judge | Mrs L Stephens |
| Date | 04 January 2022 |
| Administrative Decision Number | O/002/22 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003511346 |
O/002/22
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION
UK00003511346 BY MFS AFRICA LIMITED TO
REGISTER:
AS A TRADE MARK IN THE UNITED KINGDOM
IN CLASSES 9 AND 36
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 422029
BY MASSACHUSETTS FINANCIAL
SERVICES COMPANY
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BACKGROUND AND PLEADINGS
1. On 13 July 2020, MFS Africa Limited (“the applicant”) applied to register the mark
shown on the cover page of this decision as a trade mark in the United Kingdom in
respect of computer software and mobile applications and electronic payment apparatus in class 9 and
electronic wallet services; remote payment services; electronic payment services and electronic
processing of payments via a global network in class 36.
2. The application was published for opposition purposes on 11 September 2020 and,
on 11 November 2020, the application was opposed in full by Massachusetts Financial
Services Company (“the opponent”). The opposition is brought under sections 5(2)(b),
5(3) and 5(4)(a) of the Trade Marks Act 1994 (“the Act”).
3. In respect of its section 5(2)(b) and 5(3) claims, the opponent relies upon its United
Kingdom Trade Mark (“UKTM”) 3177382 for the word mark MFS (“the earlier mark”)
and all services it is registered for. The earlier mark was applied for on 29 July 2016
and registered on 28 October 2016 in respect of financial services, namely, investment,
advisory, management, administrative and distribution services for investment
companies, mutual funds and others in class 36.
4. The earlier mark qualifies as an acceptable basis to oppose the application at hand,
in accordance with section 6 of the Act. As it had not been registered for more than five
years at the date of application, it is not subject to the proof of use requirements defined
in section 6A of the Act.
5. In regard to its 5(2)(b) claim, the opponent submits that, on account of the visual,
phonetic and conceptual similarity between the marks and the identity and/or similarity
between the respective specifications, there exists a likelihood of confusion including
a likelihood of association. For the purpose of its claim under section 5(3), the
opponent states that, as a result of the confusion on the part of the relevant public,
believing the marks (or parties) to be economically connected, the use of the application
would take unfair advantage of, and tarnish, the reputation of the earlier mark. It further
submits that the distinctive character of the earlier mark would be diluted by the use of
the application and that consumers’ confusion would compromise the ability of the
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earlier mark to arouse immediate association with the services for which they are
registered.
6. In reply to the opponent’s 5(2)(b) claim, the applicant submits that there are clear
differences between both the respective marks and the respective goods and services,
such that there would be no likelihood of confusion. With regard to the 5(3) claim, the
applicant puts the opponent to strict proof of its alleged reputation, additionally stating
that the applicant has developed a reputation as a market leader in the provision of
mobile financial solutions. It denies that the use of the application would take unfair
advantage of the earlier mark’s reputation, that the earlier mark would be tarnished as
a result, that the distinctive character of the earlier mark would be diluted, and that the
ability of the earlier mark to arouse immediate association would be compromised.
7. Turning to the 5(4)(a) claim, the opponent relies upon its alleged earlier right in the
sign MFS. It claims that the sign has been used throughout the UK since 1992 in
respect of financial services. The opponent claims to have acquired a substantial
goodwill under the sign and contends that use of the applied for mark, on account of its
similarities with the sign relied on, would be misrepresentative and likely result in
damage to the opponent’s goodwill and reputation. The applicant does not accept that
registration of the applied for mark would contravene Section 5(4)(a) of the Act.
8. Both sides are professionally represented; the opponent by Withers & Rogers LLP
and the applicant by Appleyard Lees IP LLP. Both parties filed evidence during the
course of these proceedings, which will be summarised to the extent that it is
considered necessary. The parties were given the option of an oral hearing, though
neither asked to be heard on this matter. Both parties elected instead to file written
submissions in lieu. Again, I do not intend to summarise these but will refer to them
throughout this decision, as and where necessary. This decision is taken following a
careful perusal of the papers before me, keeping all submissions in mind.
EVIDENCE
Opponent’s evidence in chief
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