What has happened?
- In a recent UK IP Office decision, the owner of the Sexy Fish restaurants, Caprice Holdings Ltd, successfully relied on its UK trade mark registration for SEXY FISH (plus a registration for SEXY PIZZA) covering restaurant services to oppose Sexy Coffee Ltd's trade mark application for SEXY COFFEE covering various coffee related goods and services.
- The Office held that there was a likelihood of both direct and indirect confusion between the marks.
- While most trade mark registrations that have descriptive/laudatory connotations have a relatively narrow scope of protection, the decision illustrates that clever and unusual marks (even if consisting of somewhat commonplace adjective-noun combinations like "sexy fish") can sometimes buck that trend. There can be a likelihood of confusion where others use a mark that follows a similar construction (like SEXY COFFEE).
- The SEXY COFFEE application was accepted for some peripheral goods/services such as retail, import and export (class 35), distribution and transport services (class 39) etc and leasing of coffee makers (class 43) which were deemed not similar to the restaurant services covered by the prior SEXY FISH registration. However, it was rejected for the applicant's core goods/services – all goods in classes 30 (coffee, tea, cocoa etc) and 33 (alcoholic beverages and cocktails etc), as well as food delivery services in class 39, and coffee shop services in class 43.
Want to know more?
Sexy coffee Ltd applied to register the mark SEXY COFFEE in classes 30, 33, 35, 39 and 43. This was opposed by Caprice Holdings Ltd based on its prior UK trade mark registrations for SEXY FISH and SEXY PIZZA, both covering restaurant, bar and catering services in class 43. Caprice relied on (i) a likelihood of confusion for both marks and (ii) the reputation in its SEXY FISH registration.
Comparison of goods/services
The Office's findings about the similarity of goods and services (ie varying between identity, low similarity and dissimilarity) are unsurprising. The opponent's restaurant, bar and catering services in class 43 were deemed:
- Identical to most of the applicant's class 43 services (coffee shops etc) under the Meric principle.
- Similar to a low degree to the applicant's class 30 goods (including coffee, tea, cocoa), class 33 goods (including alcoholic beverages and cocktails) as well as food delivery services in class 39.
- Dissimilar to the applicant's class 35 services (retail, import and export etc) and most of its class 39 (distribution and transport etc) and 43 (leasing of coffee makers etc) services.
Comparison of mark/sign
The Office found that the marks share a similar construction, with SEXY identified as the dominant element in each case, whilst FISH, PIZZA and COFFEE were considered descriptive for types of food and restaurants. The marks were found to be visually and aurally similar to a medium degree, and conceptually similar to a high degree.
Likelihood of confusion
Given the degree of similarity of the marks, there was a finding of both direct and indirect likelihood of confusion for those goods/services deemed identical or similar. The finding of indirect confusion hinged on the fact that SEXY COFFEE would be perceived as a brand extension from "the opponent's stable".
Fine line?
Some might argue that the word SEXY is a commonly used laudatory term that conveys a sense that something is innovative, stylish or attractive such that it should be given a relatively narrow scope of protection. They might argue that, at the very least, the noun (FISH, PIZZA, COFFEE) should be given some weight in the overall analysis of likelihood of confusion otherwise there is a risk of conferring a monopoly on the word SEXY + food/drink noun.
In most cases, it is true that there is a finding of no likelihood of confusion in scenarios similar to this one. For example:
- In the DOLLS CLUB v DOLLS WORLD decision (O/172/18), the Office found that there was no brand extension at play or direct or indirect likelihood of confusion. The decision stated that "a finding of indirect confusion should not be made merely because the two marks share a common element, differences in the marks as wholes by the second elements results in no direct or indirect likelihood of confusion".
- Similarly, WINTER WARMER was held to convey a different concept to WINTER WONDER (O-020-20) such that there was no likelihood of confusion overall (due to conceptual counteraction).
However, there are occasional instances where an arguably laudatory term or combination is given broader protection, as in this case. It illustrates that relatively broad rights can sometimes be obtained despite the use of commonplace laudatory words. In this case, it is probably due to the unexpected and bold use of the word SEXY for restaurants and the fact that SEXY COFFEE does not convey a radically different overall concept.
What does this mean for you?
- In most cases, using common laudatory/allusive words as trade marks means that they are given a relatively narrow scope of protection and are difficult to enforce.
- However, not all marks fall into this category.
- In some cases, a mark can consist of a distinct structure (sexy + food/drink noun) and be a bold application of a common laudatory term such that it is given broader protection.
- Marks that follow a similar construction might well be held to be in conflict unless they convey different conceptual meanings.
