What has happened?

• In 2021, Stiga AB filed a UK trade mark application for the stylised word mark STIGA stig (depicted below) covering various goods and services relating to lawnmowers and their maintenance/repair. The application was opposed by Andreas Stihl based on its earlier UK trade mark registrations for STIHL (depicted below) covering items such as gardening machinery and tools.

The Opponent's earlier mark	The mark applied for

• The UKIPO upheld the opposition solely on the basis of unfair advantage – the marks were not sufficiently similar for a likelihood of confusion. 

• This decision is an interesting reminder that (in rare cases) marks can be sufficiently similar for a link and unfair advantage to result even where they are not sufficiently similar for a likelihood of confusion. The test is different.

Want to know more?

The opposition

The opposition was based on two UK trade mark registrations for the word STIHL (deriving from EUTMs on Brexit), dating back to 2005 and 2017. The opponent's registrations cover a broad range of good and services related to gardening and landscaping.

Stiga produces and sells lawnmowers and related tools. It sought protection for the following goods and services:

• Class 7: Robotized lawn mowers for gardening; lawn mowers.

• Class 9: Lawn mower automation and remote control software; Lawn mower remote control devices.

• Class 37: Installation, repair and maintenance of lawn mowers; cleaning and painting of lawn mowers; battery charging services for lawn mowers.

Evidence of reputation

To support its argument that the STIHL mark had a reputation in relation to all goods and services covered by the earlier registrations, the opponent filed extensive and detailed evidence. This included material showing:

• The opponent's long-standing and global presence in the agricultural and horticultural markets. 

• The extensive network of approved STIHL suppliers and licensees.

• Significant sales volumes, sales figures and market share data for goods such as chainsaws and hedge trimmers sold by the opponent. However, the opponent had a far lesser market share in relation to lawnmowers in the UK.

• Significant advertising and marketing expenditure by the opponent, as well as supporting examples of advertising materials. 

• Extensive third-party UK press articles and publications about the opponent and its products.

• Social media accounts and evidence of the numerous followers of the opponent around the world.

The examiner found that the evidence submitted showed that the opponent's STIHL mark had been used and promoted extensively throughout the UK.

The decision

The UKIPO concluded that:

• The marks were visually similar to a below medium degree and aurally similar to a low degree. They were conceptually neutral. The latter increases the risk of imperfect recollection (although the level of attention of the average consumer was medium-high which lessens the effect of imperfect recollection). 

• There was a high degree of overlap between the goods and services. In class 7, they were found to be either self-evidently identical (ie lawnmowers), or identical by virtue of the Meric principle (one group obviously containing the other). 

• The earlier STIHL mark had a "very high degree" of enhanced distinctiveness in relation to gardening equipment and machines used in agriculture and forestry in Class 7 but not in relation to lawn mowers.

• Overall, there was no likelihood of confusion between the marks, with no risk of indirect or direct confusion. Although the goods in question where identical/similar, the earlier mark had a very high degree of enhanced distinctiveness and there was a risk of imperfect recollection, the marks were not very similar and the average consumer would pay a relatively high degree of attention. 

• The claim of passing off also failed. The STIHL mark was "simply not similar enough" to the mark applied for. There could therefore be no misrepresentation, and no damage would result.

• The STIHL mark had a "very strong reputation" for gardening equipment, machines and power operated equipment used in agriculture and forestry, but not lawnmowers. The UKIPO remarked that there was a relatively high degree of attention for the purchase of lawn mowers, specifically.

• There was a non-hypothetical risk that a link would be made and therefore the reputation of the STIHL mark in respect of high-quality gardening machinery would transfer to the STIGA stig mark. There was a subsequent unfair advantage. The reputation claim was therefore successful for all goods/services covered by the later mark. This included goods for which Stihl did not have a reputation (such as lawnmowers) because those goods still shared some similarity to those for which Stihl did have a reputation (such as gardening power tools).

What does this mean for you?

• Occasionally, a reputation-based claim will succeed where a likelihood of confusion and passing off one does not. This is often the case where the marks are only faintly similar. 

• Strong evidence of reputation can push a borderline case over the line. This was the case here. Stihl's evidence was sufficiently detailed to paint a clear picture of its reputation for STIHL. They may also have been aided by the fact that it was quite a specific industry.

• The case also serves as a reminder that the UKIPO is not bound by the EUIPO's decisions – Stihl had tried to rely on successful cases brought against comparable applications at the EUIPO, but those were disregarded by the UKIPO.