Decision Nº O/077/22 from Intellectual Property Office - (Trade market), 28 January 2022
| Judge | Ms Rosie Le Breton |
| Registration Number | UK00003468845 |
| Date | 28 January 2022 |
| Court | Intellectual Property Office (United Kingdom) |
| Administrative Decision Number | O/077/22 |
O/077/22
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. 3468845
IN THE NAME OF MR AMIT POPAT
IN RESPECT OF THE TRADE MARK
YOGA MAN
IN CLASSES 9, 16, 28, 38 & 41
AND
THE OPPOSITION THERETO UNDER NO. 420590
BY LENOVO (BEIJING) LIMITED
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Background and pleadings
1. Mr Amit Popat (“the applicant”) applied to register the trade mark YOGA MAN under
application no. 3468845 in the UK on 21 February 2020. It was accepted and
published in the Trade Marks Journal on 10 April 2020 in respect of the following
goods:
Class 9: Cartoons (Animated -); Animated cartoons; Animated cartoons in the
form of cinematographic films; Video games [computer games] in the form of
computer programs recorded on data carriers; Video games on disc [computer
software]; Video games programs [computer software];Video games software;
Downloadable electronic books.
Class 16: Books; Books for children; Educational books.
Class 28: Children's multiple activity toys; Children's toys; Crib mobiles
[toys];Crib toys; Cuddly toys; Developmental toys; Educational toys; Fabric
toys; Fantasy character toys; Fluffy toys; Model toys; Models being toys;
Modular toys; Toys adapted for educational purposes; Toys for infants; Toys
made of plastics; Toys made of rubber; Toys presented in an advent calendar;
Toys relating to magic; Toys, games, and playthings.
Class 38: Transmission of videos, movies, pictures, images, text, photos,
games, user-generated content, audio content, and information via the Internet.
Class 41: Creating animated cartoons; Providing online video games;
Electronic online publication of periodicals and books.
2. Lenovo (Beijing) Limited (“the opponent”) partially opposes the trade mark on the
basis of Section 5(2)(b) of the Trade Marks Act 1994 (“the Act”). The opposition was
filed on 23 June 2020. This is on the basis of its earlier EU trade mark (“EUTM”) YOGA
under registration no. 11229085.1 The opposed goods are as follows:
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 t hese proceedings given the impact of the
transitional provisions of The Trade Marks (Amendment etc.) ( EU Exit) Regulations 2019 – please see Tribunal
Practice Notice 2/2020 for further information.
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Class 9: Video games [computer games] in the form of computer programs
recorded on data carriers; Video games on disc [computer software]; Video
games programs [computer software]; Video games software;
Class 38: Transmission of videos, movies, pictures, images, text, photos,
games, user-generated content, audio content, and information via the Internet.
3. The following goods registered under the earlier mark are relied upon by the
opponent:
Class 9: Computers, namely portable computers and tablet computers,
including software and peripherals for use therewith.
4. The opponent argues that the respective goods are identical, highly similar and
similar and that the marks are highly similar, giving rise to a likelihood of confusion.
5. The applicant filed a counterstatement denying the claims made and requesting that
the opponent provides proof of use of its earlier trade mark relied upon.
6. Only the opponent filed evidence in these proceedings. This will be summarised to
the extent that it is considered necessary.
7. Only the opponent filed written submissions in lieu of a hearing which will not be
summarised but will be referred to as and where appropriate during this decision. As
no hearing was requested, this decision is taken following a careful perusal of the
papers.
8. Although the UK has left the EU, section 6(3)(a) of the European Union (Withdrawal)
Act 2018 requires tribunals to apply EU-derived national law in accordance with EU
law as it stood at the end of the transition period. The provisions of the Act relied upon
in these proceedings are derived from an EU Directive. That is why this decision
continues to refer to EU trade mark law.
Evidence
9. The opponent filed evidence in the form of a witness statement in the name of Becky
Williams, described as the “Senior Counsel and Director of Trademarks” for the
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