Beat By Debra – Beats loses trade mark opposition

Beats Electronics, LLC (“Beats”) has failed in its opposition against UK trade mark application no. UK00003932232 in class 9 (the “Application”) filed by Enping Yin Peng E-Commerce Co., Ltd. (“Enping”).

Background

The Application is for a figurative mark containing the words “Db Debra” as set out below.

Beats attempted to rely on its existing UK registered trade mark nos. UK00917916513 in classes 9, 14 and 35 and UK00907157357 in class 9 (the “Registered Marks”) which are both figurative marks comprising its “b” logo:

Beats relied on s.5(2)(b) and s.5(3) of the Trade Marks Act 1994, arguing likelihood of confusion, unfair advantage and potential damage to its reputation.

Decision

Proof of use

Enping put Beats to proof of use in respect of some of the class 9 goods relied on, given that the Registered Marks were both registered more than five years ago and so were subject to proof of use requirements.

Beats provided evidence of significant sales in the UK (over $360 million between 2018-2023), marketing expenditure (over $28.4 million), press coverage, and distribution through major UK retailers. The hearing officer determined that Beats had shown genuine use of its marks for headphones, portable speakers and handheld audio devices (the “Specified Goods”), but not for other claimed goods.

s.5(2)(b) ground

When considering the similarity of the marks, the hearing officer determined that the word ‘Debra’ in the Application played a greater role in the overall impression of the mark, with the ‘Db’ device element playing a lesser role.

Assessing the visual comparison, the hearing officer found the marks to be similar to a low degree, highlighting that, although the device in the Application would be perceived as consisting of a letter ‘b’ which would also be identified in the Registered Marks, the letter ‘D’ would also be perceived in the Application and act as a point of difference between the marks. Furthermore, the perception of this element as a headphone or an ear acted as a further point of difference.

From an aural perspective, the hearing officer found the marks to be dissimilar, stating that consumers would refer to the Application as ‘Debra’ and the Registered Marks as ‘b’, which were not aurally similar to any degree.

On a conceptual basis, the hearing officer likewise considered the marks to be dissimilar. The officer said there was no similarity between the concept of the Application, which was associated with a female forename, and the Registered Marks, which were the single letter ‘b’. Even when considering the ‘Db’ device only, the hearing officer said that the concept was the letters ‘Db’ or a reference to audio or an ear, which was likewise dissimilar to the Registered Marks.

Regarding distinctiveness of the Registered Marks, Beats argued that its marks enjoyed an enhanced degree of distinctive character. The hearing officer determined that the Registered Marks enjoyed enhanced distinctiveness in relation to the Specified Goods, but otherwise the Registered Marks possessed a medium level of inherent distinctiveness.

Taking all of these factors into account, the hearing officer ultimately decided that, whilst the marks shared a degree of similarity, the average consumer would notice the points of difference between the marks, which would lead the consumer to being able to accurately recall the marks from one another. As such, there was found to be no likelihood of direct or indirect confusion between the marks.

s.5(3) ground

The hearing officer assessed reputation of the Registered Marks and determined that they enjoyed a strong reputation in relation to the Specified Goods.

However, the hearing officer failed to see how consumers would believe the Registered Marks and the Application to be economically connected, given the strong reputation and high degree of distinctive character would be offset by the weak similarities between the marks. In any event, were a fleeting link to be made, it would not result in an unfair advantage for the applicant or damage to the opponent.

Therefore, the opposition failed in its entirety.

Comment

This case reinforces that any assessment of similarity between marks will be a global assessment which analyses the marks as a whole, and that just because one small element of a mark is similar to another mark, this does not mean that the mark as a whole is similar.

Additionally, just because a mark benefits from a strong reputation, this does not automatically mean that unfair advantage or dilution will be found. There still needs to exist an economic link between the marks in the eyes of consumers, which will be assessed based on similarity between the marks and similarity of goods and services, among other factors.

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