UKIPO Decision BL Number O/ 113/19

Background: SK SMILEYGROWTH INT’L CO LTD filed a UK trade mark application for SMILEYGROWTH; however this application was opposed by THE SMILEY COMPANY SPRL – who relied upon an EU trade mark registration for the mark SMILEY. Both marks covered general household, dining, kitchen and personal care items.

Main points from the decision:

THE SMILEY COMPANY SPRL had to prove genuine use of its mark SMILEY. The hearing officer accepted that the opponent operates as a licensing company and it licenses use of the earlier mark SMILEY to licensees who manufacture and sell the goods. Genuine use of the earlier mark by licensees and with the consent of the proprietor is also deemed to be genuine use by the proprietor.
There was likelihood of indirect confusion between the marks and that average consumer instinctive reaction, when faced with the applied mark in the purchasing process, will therefore not simply be to bring to mind the earlier mark – but will be to assume there is an economic connection between the two undertakings. The additional GROWTH component will be seen as a variant brand.
The opposition was successful and the registration for SMILEYGROWTH was refused.
Comment – this case is interesting because use by licensees is treated as equivalent use to that of the licensor. If you are looking to franchise your brand, then please come and speak to us, as we can help with the drafting of suitable licenses to meet you everyday needs.