28. Juni 2019
On 21 August 2017, JK Solutions (JK) filed a UK trade mark application for a word mark KINKEDIN in class 45 designating the following services:
"Agency services for arranging personal introductions; Computer dating services; Internet based personal introduction services; Internet dating services; Internet-based social networking services; Licensing of rights relating to the use of photographs; Licensing of rights relating to video productions; Video dating services."
LinkedIn Ireland Unlimited Company (LinkedIn) opposed this application based on a likelihood of confusion with its earlier EUTM registrations for the word mark LINKEDIN and the logo, covering inter alia class 45 services and that its marks had a reputation.
LinkedIn also relied on passing off, claiming that it would be tarnished as the reference to "kinked" may suggest services of a sexual nature.
The Opposition Division upheld the opposition and rejected the application but not on the basis of likelihood of confusion or passing off but on the reputation claim only.
The Examiner considered the services to be either identical or similar and the marks to be visually and aurally similar to a high degree but conceptually different. This finding could have given the impression that the opposition should have succeeded on the likelihood of confusion, yet the Examiner decided that there was no confusion, whether direct or indirect, for any of the services at issue.
The Examiner then proceeded to assess the reputation claim and criticised the opponent's evidence. Most of the evidence was not dated (or dated from after the application date) and included articles describing LinkedIn as "the dull networking site [that] struggled to hold its own against its sexier relatives, Instagram, Facebook and Twitter".
The Examiner concluded that the evidence could have been stronger and was not sufficient to establish that the distinctiveness of the mark had been enhanced in relation to any services other than "business networking".
Despite that finding, it was JK who helped in strengthening LinkedIn's position by stating in its witness statement that LINKEDIN "is synonymous with the opponent and its 500+ million users" and that "it is very clear to every adult on the planet that LinkedIn is clearly a business networking and job hunting site". The Examiner, therefore, concluded that the reputation was a strong one.
As a result, KINKEDIN being advertised as a "casual kinky sex site" catering for "kinky or fetish interest" would clearly tarnish the image of LinkedIn as a provider of professional networking services.
Further, the Examiner also took into consideration the use of the mark by JK on its website with the tag line "Like LinkedIn… nah… not really" and other images alluding to LinkedIn and its services. This use led the Examiner to the conclusion that JK intended to exploit LinkedIn's reputation and that such use would lead to unfair advantage.
The opposition failed on passing off as the Examiner decided that there would be no misrepresentation.
However, the opposition was successful in its entirety on the basis of reputation and the application was refused.
This case is particularly interesting, because despite the marks being aurally and visually similar to a high degree, it was held that there was no likelihood of confusion on the basis of conceptual dissimilarity alone.
Another important lesson relates to the evidence. There is no doubt that LinkedIn has a strong reputation, yet the evidence provided by LinkedIn did not show this.
This is not the first time when an owner of a famous mark fails to provide strong evidence of its reputation. In this case some of the evidence was in fact derogatory to LinkedIn. This case should also be a warning message with regard to the content of witness statements – a careless admission of reputation of LinkedIn by JK may have tipped the scale in LinkedIn's favour.
The last point worth noting is the fact that actual use of the mark by JK was taken into consideration when assessing the unfair advantage. This seems to be a continuing trend both at the UKIPO and the EUIPO. Therefore, trade mark owners should be careful how they use their marks if they want to avoid having their trade mark applications refused.
Case ref: BLO-178-19