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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Speedo International is a manufacturer and distributor of swimwear and swim-related accessories, such as goggles. The company was founded over a century ago in Sydney, Australia, a fact that is celebrated by its stylised boomerang logo. The reputation of Speedo, which is now based in Nottingham, UK, and a subsidiary of the Pentland Group, has been built, in large part, by persuading famous swimmers to wear their (Speedo’s) swimsuits and by staying at the forefront of swimsuit design which uses cutting edge technology. Swimmers such as Michael Phelps, Mark Spitz and Britain’s Rebecca Adlington have all stood on Olympic gold medal podiums wearing Speedo swimwear.

The US company Ispeed began selling competing swimwear and accessories (including goggles) in Boston about 100 years after the foundation of Speedo (in 2013). Ispeed employs a logo that is meant to represent “the intelligent way of speed” (whatever that might mean).

About a year after their Boston birth, Ispeed began to expand their operations. Part of this expansion involved filing a UK trade mark application (in June 2014 in the joint names of their related companies New New Inc. and New New Inc. Limited) for their Ispeed logo covering swimming related goods in Classes 9 and 25. This UK trade mark application drew the attention of Speedo, who, through their trade mark holding company (Speedo Holdings BV), opposed. The opposition was based on Speedo’s earlier trade mark rights in their word mark (Speedo) in Classes 9 and 25 and either a likelihood of confusion (Section 5(2)(b) of the 1994 Trade Marks Act) or unfair advantage/detriment to the distinctive character or repute of Speedo (Section 5(3)).

The opponent filed significant amounts of evidence which, according to the Hearing Officer (Mr C.J. Bowen), established its (the opponent’s) strong reputation in the trade mark Speedo for swimwear and related goods both in the UK and in the EU. The applicant also filed evidence in the form of customer reviews of their (Ispeed) products. The large majority of these reviews showed that relevant consumers were able to differentiate between the competing Ispeed and Speedo goods.

Taking the above into account, the Hearing Officer ruled as follows:

i)      There was no likelihood of confusion between the two marks and the two sets of goods, even though the goods were identical or very similar. In reaching this conclusion, Mr Bowen was persuaded that the various customer reviews filed by the applicant confirmed his view that differences between the competing trade marks were sufficient to avoid a likelihood of either direct or indirect confusion.

ii)     As far as the ground of opposition brought under Section 5(3) was concerned, the opponent had established a significant reputation in the trade mark Speedo for swimwear and related goods in the UK (and the EU). Based on certain customer reviews which had been filed by Speedo and which mentioned Speedo and Ispeed goods in the same review, (for example one commented “they didn’t need to pretend to be Speedo to be good), the opponent had also established that relevant consumers would make a link between the Speedo and Ispeed swimwear (and accessories). In other words exposure to the applicant’s trade mark would call the Speedo trade mark to mind.

iii)    Given that there was very little evidence that the Ispeed products were inferior to those of Speedo, in fact most of the evidence on this pointed the other way, it was not possible to conclude that the trade mark applicant’s use of their Ispeed logo in the UK would be detrimental to the repute of the opponent’s Speedo trade mark. In view of that, the Section 5(3) ground of opposition based on detriment to repute should be rejected.

iv)    By contrast, the absence of any explanation from the applicant as to why the word speed in their Ispeed logo was presented in such a similar manner to that found in the Speedo trade mark (as used), when combined with the evidence showing that the use of the opposed mark in relation to swimwear (and accessories) would bring Speedo to mind, led to the conclusion that the Ispeed mark would ride on the coattails of the opponent’s mark. On this basis, Mr Bowen concluded, the applicant’s use of Ispeed in relation to all of the (Class 9 and 25) goods claimed would take unfair advantage of the repute of the trade mark Speedo. This ground of Section 5(3) opposition therefore succeeded.

v)     The Section 5(3) opposition based on a detriment to the distinctive character of the trade mark Speedo also succeeded. According to the Hearing Officer:

        “Use of the applicant’s trade mark in relation to identical goods to those for which the opponent is well known and that will bring the opponent’s trade mark to mind will, in my view, be detrimental to the distinctive character of the opponent’s Speedo trade mark and will lead to a likelihood of dilution. This is different to a likelihood of confusion; being caused to wonder whether there might be a connection does not mean that consumers will positively believe that there is such a connection. Whether or not consumers later realise that there is no connection between the users of the competing trade marks, that initial doubt means that the opponent’s trade mark’s continued ability to create an immediate association with goods from it is likely to be weakened. Over a period of time such uses are likely to erode the distinctive character of the opponent’s trade mark. That, in my view, is likely to affect the functions of the opponent’s trade mark, including the origin and advertising function, which enables the opponent to both attract and retain customers. In my view, there is a serious risk that this will result in an eventual change in the economic behaviour of the opponent’s customers and potential customers, i.e. with a less distinctive brand the opponent’s swimwear and related swimming accessories will stand out less and consumers will therefore be less likely to select those goods compared to those of the opponent’s competitors”.

vi)    The opposed UK trade mark application should therefore be refused in full under two of the Section 5(3) grounds raised.

Comment

This case shows how far the tentacles of a well-known brand can stretch, particularly in respect of identical or very similar goods. It remains to be seen whether or not a UK IP Court would reach a similar conclusion. Given that Ispeed products (swimwear, goggles and swim caps) are available at the Amazon UK website, Speedo will eventually have to remove such goods from circulation in the UK if they wish to avoid the detriment to their reputation (in Speedo) that was deemed likely by the UK Hearing Officer.