Bibles considered in UK opposition proceedings

The only bible is The Lad Bible!

Florentyna Dawn Ltd (the "Applicant") filed a UK trade mark application for THE UNI BIBLE and logo (above left) in classes 9, 38 and 41 (the "Application"). This was opposed by The Ladbible Group Limited (the "Opponent") based on their numerous earlier registrations for The Lad Bible amongst others (above right) (the "Earlier Rights").

Similarity of the marks

The UKIPO considered the similarity of the marks. It was held the marks had at least a medium degree of aural similarity given that the device element of the Application (which may be a 'U' or may be a representation of an open book) would not be pronounced so only the middle part of the marks would differ.

The marks were held to have a low level of visual similarity given the device element and the different middle words. Neither parties gave any submissions in relation to the conceptual similarity but both contain the word "bible" which indicates they are factual reference guides. The marks were held to have a medium level of conceptual similarity.

For most of the goods and services applied for (such as online publications, telecommunication services, social media, online magazines and entertainment) it was held that the Earlier Marks pose a lower than average degree of inherent distinctiveness. This takes into account the sheer number of "bibles" available online and the frequency with which information guides are known as bibles. However, for some of the class 9 goods (such as eyewear, glasses, cases for mobile phones) it was held the marks have a medium degree of inherent distinctiveness given that the they do not describe or allude to any of their features.

Overall, the Hearing Officer considered whether there was a likelihood of confusion. He discussed the two types of confusion as explained in L.A. Sugar Limited v By Back Beat Inc (BL O/375/10) being direct and indirect confusion.

The Hearing Officer held that whilst the marks share "THE" and "BIBLE", the different middle words were sufficiently different to mean that there was no likelihood of direct confusion. However, people familiar with THE LAD BIBLE will presume that THE UNI BIBLE is a similar collection of factual information/entertainment offered by a different entity and, therefore, indirect confusion will have arisen, except for eyewear, glasses and cases for mobile phones. The opposition succeeded under Article 5(2)(b) as the marks were sufficiently similar to cause confusion, except for these goods.

The Hearing Officer went onto consider the opposition under Article 5(3), which considers unfair advantage. Whilst it is not stated that the Applicant intended to take advantage of the reputation and success, they would have derived this benefit due to the well-known status of THE LAD BIBLE online. The opposition succeeded here in classes 38 and 41.

Finally, the Hearing Officer considered the opposition under Article 5 (4) (a) which considers passing off. However, the Opponent failed to show the necessary goodwill and did not succeed on this ground.

Case Ref: O/804/18