Decision Nº O/034/22 from Intellectual Property Office - (Trade market), 17 January 2022
| Judge | Ms Leisa Davies |
| Date | 17 January 2022 |
| Registration Number | UK00003430232 |
| Court | Intellectual Property Office (United Kingdom) |
| Administrative Decision Number | O/034/22 |
O/034/22
TRADE MARKS ACT 1994
IN THE MATTER OF TRADEMARK APPLICATION NUMBER 3430232
BY
REZZ LIMITED AND PEOPLES PHONE LIMITED
TO REGISTER THE FOLLOWING TRADE MARK IN CLASSES 9, 35 AND 38
TALKLAND
AND OPPOSITION THERETO UNDER NUMBER 418961
BY
TALKTALK BRANDS LIMITED
1
Background and Pleadings
1. On 20 September 2019, Rezz Limited and Peoples Phone Limited (“herein called
the Applicants”) applied to register in the UK the trade mark TALKLAND numbered
3430232 for the goods and services in classes 9, 35 and 38 as outlined later in my
decision. It was accepted and published in the Trade Marks Journal on 4 October
2019.
2. On 2 January 2020 TalkTalk Brands Limited (“the Opponent”) filed an opposition to
the application under sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994
(“the Act”).
3. Under Sections 5(2)(b) and 5(3) of the Act the Opponent relies on the following
trade marks:
i. TalkTalk
UKTM no. 3141240
Filing date: 17 December 2015
Registration date: 1 April 2016
Whilst registered in other classes it relies only upon its goods and
services in classes 9, 35 and 38 as set out in the annex hereto.
ii. talktalk
EUTM no. 0152189281
Filing date: 15 March 2016 claiming a priority date 17 December 2015
(UK)
Registration date: 8 July 2017
Whilst registered in other classes it relies only upon its goods and
services in classes 9, 35 and 38 for the purposes of this opposition as
set out in the annex hereto.
4. Under section 5(2)(b) the Opponent claims that there is a high degree of similarity
between the respective trade marks as a result of the signs sharing the prefix ‘Talk’
1 Although the UK has left the EU and the transition period has now expired, EUTMs and international Marks which
have designated the EU for protection, are still relevant in these proceedings given the impact of the transitional
provisions of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, to whic h Tribunal Practice Notice
2/2020 refers.
2
and that consumers pay a higher degree of attention to the beginning of a mark than
to its end; the signs share the same number of syllables and the same number of
letters; the respective goods and services are identical or highly similar. Consequently
it argues that there exists a likelihood of confusion on the part of the public including
a likelihood of association.
5. Under section 5(3) the Opponent contends that it has used the trade marks for
several years and has as a result built up a significant reputation under the marks for
its goods and services in classes 9, 35 and 38. It contends that the high degree of
similarities are such that consumers would believe that there is an economic
connection between them. Furthermore, it is claimed that the Applicants will gain an
unfair advantage because they will benefit from the advertising and investments
already made by the Opponent; and take advantage of the aura attaching to the
Opponent’s marks on account of their reputation. This, it is said, will result in the
Applicants being able to enjoy increased sales with little or no investment made to
promote their mark. It is submitted that the Opponent has invested a significant amount
of money to provide goods and services of the highest quality which if the Applicants’
goods and services are not of the same quality will result in consumers suffering
disappointment which in turn will affect sales and the Opponent’s reputation.
6. Under section 5(4)(a) of the Act the Opponent relies on the unregistered sign
‘TalkTalk’ for goods and services as set out in the annex attached hereto, which is
said to have been used throughout the UK since June 2002. It is claimed that it has
built up a significant goodwill under the name ‘TalkTalk’ in relation to its products and
services as relied upon. As a result of the identity between the goods and services
and the high degree of similarity between the marks, it is claimed that consumers are
likely to be misled into believing that the goods and services offered under the name
‘TALKLAND’ come from or are associated with the Opponent when they are not. It is
claimed that the “risk of misrepresentation is increased by the fact that the Opponent
has used a family of marks with the prefix Talk (“TalkTalk”, “Talk2Go” “TalkSafe” and
“Talk2Us”). This will result in consumers believing that TALKLAND is a sub brand of
the Opponent. This misrepresentation will damage the Opponent’s goodwill …and
damage sales.”
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