Is your trade mark distinctive? #YOLO

Yolo Products Limited (the Applicant) applied to register the logo above left (the YOLO device) as a trade mark in the UK in classes 16, 18 and 25.

It was opposed by CBM Creative Brands Marken GmbH (the Opponent) on both absolute and relative grounds, namely that:

• the YOLO device is devoid of distinctive character under s3(1)(b) of the UK Trade Marks Act 1994 (the Act)
• the YOLO device is similar to EU Trade Mark Registration No. 14583454 for the mark yobo in classes 18, 25 and 35 (the Earlier Mark) and covers similar goods and services, such that there is a likelihood of confusion on the part of the public under s(5)(2)(b) of the Act.

Absolute grounds

The Opponent argued that the word YOLO is a well-known acronym for the phrase "You only live once" and would be viewed by the average consumer as an advertising slogan rather than an indicator of trade origin.

The Examiner acknowledged that this would be the case for a significant proportion of average consumers but also conceded that another significant proportion would view the word as an acronym or as an invented word with no particular meaning.

Nevertheless, the fact that a significant proportion of average consumers would view the mark as an advertising slogan meaning "You only live once" was enough for the Examiner to find that the mark was devoid of distinctive character and therefore inherently non-registrable in relation to:

• Class 16: Personal organisers; diaries; pads [stationery]; journals; blank writing journals; agendas; calendars; greeting cards; stationery; paper stationery; stationery boxes; binders; folders; photo albums; passport covers; pencil cases.
• Class 18: Bags; purses and wallets.
• Class 25: Clothing, footwear and headgear

Surprisingly, he did not consider the objection to apply to "Paper; blank cards; memo paper; envelopes; writing instruments" in class 16 or "Luggage and other carriers" in class 18.

Relative grounds

The Examiner held, on a comparison of the goods and services, that the goods in classes 18 and 25 were identical to those in the Earlier Mark although the goods in class 16 were held (unsurprisingly) to be dissimilar.

Moving on to a comparison of the marks, the Examiner stated that most consumers would read the YOLO device from left to right, one line at a time, as YO-LO, rather than YLOO or YOOL. He therefore found the marks to be visually similar to a medium degree.

The marks were held to be aurally similar to a high degree, the Examiner noting that both could be pronounced as acronyms, with each individual letter enunciated, or as whole words.

Conceptually, he found that the marks would be conceptually dissimilar for those consumers who understand YOLO to mean "You only live once" and yobo to mean "hooligan or bully". However, he also noted that a significant proportion of average consumers would not attribute these meanings to the words, rendering them both conceptually neutral.

In a similar vein, the Examiner held that yobo would be seen as inherently distinctive to a medium degree among those consumers who understand the mark to mean "hooligan or bully" and yet inherently distinctive to a high degree among those consumers who view the mark as an acronym or an invented word with no particular meaning.

The Examiner held that there was indeed a likelihood of confusion between the YOLO device and yobo, notwithstanding the fact that a significant proportion of UK consumers would identify different conceptual meanings which would assist in differentiating between the marks.

Key takeaway

YOLO is a phrase often used by millennials and younger generations; it became popular internet slang in around 2012. This case serves as an important reminder that, where a mark may be perceived as conveying promotional information, even among only a proportion of (younger) consumers, it will be held to be non-distinctive.

It also serves as a useful reminder that conceptual dissimilarity or neutrality is not sufficient to prevent a finding of an overall likelihood of confusion where the marks at issue are visually and phonetically similar and the goods at issue are identical.

Case Ref: O/570/19