Aunts battle highlights the importance of stylised marks

When registering your trade mark, there are a number of options available to you. Not only can you choose where you want your mark to be registered, you also have the choice as to the format of your mark.

A trade mark can be a word, phrase, logo or a combination. In addition, any word or phrase can be stylised meaning it is registered it a certain font, size or shape, giving it more of a unique appeal.

A recent case involving the nations favourite frozen potato product brand highlights the impact a stylised mark can have.

Auntie Bessie’s is a brand that is known for its as good as homemade roast potatoes and its comedic TV adverts involving grannies. Being well known across the UK, they have protected their brand with a word mark ‘Aunt Bessie’s’.

They claimed that this mark was affected by a recent application to the EU Intellectual Property Office to register a new mark, ‘Aunt Berta’s’.

Therefore, an application to oppose the application was submitted.

The question to be answered was whether the ‘Aunt Bessie’s’ word mark was sufficiently similar to the stylised mark of ‘Aunt Berta’s’.

At first instance, the EU Intellectual Property Office’s Opposition division found that as the goods for which the two marks are registered were identical and use of ‘Aunt’, the two marks were aurally and visually similar. Therefore, the application was successfully opposed.

However, this decision was annulled on appeal.

The case was then considered by the Board of Appeal who agreed that a degree of similarity would arise from the identical goods, however this was not enough to create a likelihood of confusion in relation to the general public.

This was due to the lack of similarity of the two names, if ‘Aunt’ was removed.

The board did state that the degree of similarity was further reduced due to the stylisation of the ‘Aunt Berta’s’ mark. As the word only Aunt Bessie mark was the one in contention, there was a clear difference between them visually due to the stylising.

Therefore, it is clear that stylising your mark can make a difference to your individuality.

For more guidance and information, contact Jane at The Trademarkroom.

By Ellis Sweetenham