Background

FremantleMedia Ltd and Simco Limited (the opponents) brought opposition against a trade mark application filed by Duf Ltd (the applicant) for THE PETS FACTOR in classes 9 and 41. The opponents relied on various earlier EU and UK trade mark registrations for the mark THE X FACTOR and the marks set out below:

All of the earlier trade marks related to the popular television show The X Factor which has aired in the UK since 2004. The opponents also relied on goodwill in the mark THE X FACTOR/X FACTOR in the UK

The opposition was based on sections 5(2)(b), 5(3) and 5(4) of the Trade Marks Act 1994 (TMA).

The UKIPO decision - preliminary points

The hearing officer considered it to be abundantly clear from the evidence presented that The X Factor is one of the most popular television entertainment shows ever aired on UK television. Over the years the show has spawned a number of well-known singers and bands including: One Direction, Little Mix and Olly Murs. In light of this, the hearing officer was satisfied that the opponent’s earlier marks were very well-known to the UK general public within the television entertainment context and that the reputation of the earlier marks was extremely strong.

Opposition under section 5(4)(a): passing off

Interestingly the hearing officer chose to start his analysis here. While the hearing officer agreed that the opponents had protectable goodwill in the marks THE X FACTOR/X FACTOR in the UK, he dismissed this ground of opposition because he was not convinced that substantial numbers of consumers would assume that television programmes called THE PETS FACTOR were the responsibility of the opponents. As a result, while THE PETS FACTOR would be seen as a play on the name of THE X FACTOR, it did not pass the test for misrepresentation necessary for a finding of passing off.

Opposition under section 5(2): likelihood of confusion

The hearing officer also dismissed this ground of opposition as he did not consider there would be any likelihood of confusion on the part of consumers. This was again because he did not believe consumers would consider shows called THE PETS FACTOR to be the responsibility of those behind The X Factor.

Opposition under section 5(3): marks with a reputation

The opposition was successful for the vast majority of the goods in class 9 and all of the services in class 41 on the basis of section 5(3) TMA.

In light of the huge reputation of the earlier trade marks in the UK, the hearing officer was satisfied that a large number of the relevant public would perceive a link between the earlier marks and the application for THE PETS FACTOR. He was also satisfied that THE PETS FACTOR application would take unfair advantage of the earlier marks for the services in class 41 and most of the goods in class 9 as THE PETS FACTOR mark was intended to, and would, create an attraction with the applicant’s services which would not otherwise be there. This was all achieved without the applicant having to go through the marketing effort and expense of educating consumers in the same was as the opponents did. On this basis THE PETS FACTOR application was refused for the majority of goods in class 9 and all of the services in class 41.

In short

This decision underlines the risks of seeking to adopt a trade mark which is a play on words of a trade mark with a strong reputation.