Addicted to brand protection

adidas applied to have the above left ADDICTED UK trade mark registration cancelled on the basis that it would be confused with its ADIDAS logo (above right) or, at the very least, it would take advantage of or tarnish adidas's reputation, or is contrary to public policy and accepted standards of morality.

The ADDICTED registration, which was registered in 2017, covered clothing as well as various retail, retail finance and interior design services.

The UKIPO found that there was at best a low-moderate degree of visual similarity but that the marks were conceptually dissimilar. Despite most of the goods being identical or similar and despite the enhanced distinctiveness enjoyed by adidas due to its considerable reputation, the Office found there was no likelihood that the marks would be confused by consumers.

Even if consumers thought of the ADIDAS logo on seeing the ADDICTED logo, they would not believe that the latter was another brand owned or used by adidas. Rather they would believe the marks came from different commercial undertakings.

On considering whether the ADDICTED logo would tarnish the positive reputation enjoyed by adidas under s5(3), the outcome was quite different. As above, the Office found that consumers would think of ADIDAS on seeing the ADDICTED logo, and that would be so when used on all the goods and services covered by the registration.

A significant number of consumers would recognise the marijuana leaf in the registrant's logo. The concept of marijuana and illegal drug addiction would be brought to mind and would be a negative one. The ADIDAS brand would be damaged by that negative connotation, particularly given adidas has invested heavily in professional sports, which carries with it ideals of health and a 'drug-free' sportsmanship.

Although it was recognised that the ADDICTED logo could be seen as a parody of ADIDAS, the UKIPO referred to a 2013 Hearing Officer decision of the UKIPO in which a FRAUD logo in the style of the FORD logo used by Ford Motor Company would damage the FORD brand and contravene s5(3), even though its use would amount to pure parody (Fraud Music Company v Ford Motor Company, O-504-13).

Using this logic, parody which is critical of a well-known brand or company would almost always fall foul of s5(3), as it would almost always be damaging (that is its aim). That said, in certain cases it can be argued that the use would be ''with due cause'' ("use without due cause" being a requirement of s5(3) or s10(3) infringement provision).

The registrant did not try to argue that here, presumably because there was no legitimate argument, they could make that use of the ADDICTED logo and subsequent damage would be justified. For those simply using parodic marks to make political or moral statements, there is also an argument that the use is not ''in the course of trade'' (ie the use is not commercial use and therefore does not fall foul of the s10(3) infringement provision).

The Office also found that the ADDICTED logo would take unfair advantage of adidas's reputation by getting a ''commercial leg-up" from the connection made with ADIDAS. That unfair advantage would occur only in relation to the identical and similar clothing goods and retail services.

In its reasoning, which raises concerns for public criticism utilising parody, the UKIPO found that simply using a brand as parody was sufficient to establish an advantage which was 'unfair', again setting the bar quite low for contravention of s5(3) or 10(3) as far as it applied to parody. As with the ground of tarnishment, ''with due cause'' and use "not in the course of trade'' could also be run as counter-arguments to a claim of unfair advantage.

The registration was found to be contrary to s3(3), namely that the ADDICTED logo is contrary to public policy and/or accepted principles of morality. The Office found that, whether or not there was a campaign seeking to legalise marijuana drug use, which the registrant is itself involved in, it is at the current time illegal. The mark also conveys not merely recreational drug use but also alludes to the idea of drug dependency with its associated costs and damage to society.

This resulted in the ADDICTED registration being cancelled in its entirety.

Case ref: O/442/19

Jocelyn Clarke