Travel Fox International Incorporation (TFII), a footwear retailer, from Taiwan is on the hunt. The prey in this incidence is the elusive Mark “TRAVEL FOX”, but there is a problem. SDI (Wigan) IP Limited, the now dormant Intellectual Property subsidiary of sportswear giant Sports Direct, has got there first.
SDI (Wigan) IP Limited originally filed for the trademark, in respect of a line of shoes, on the 25th September 1989. Seeking to get the existing Mark revoked TFII made an application to the UKIPO on the 6th February 2016. The decision and outcome of this application has caught our attention. The evidence provided to demonstrate that the pre-existing “TRAVEL FOX” Mark was still in genuine use and not redundant included design drawings, photographs of a trainer as sold, and screenshots from online retail outlets selling the footwear within the disputed period.
This evidence showed, although the brand was being used within the relevant period, the Mark itself was not being used as originally registered. The original version of the trademark can be seen below:
The “TRAVEL FOX” Mark itself incorporates the logo on the left-hand side and the words Travel FOX immediately to the right.
What did Travel FOX Change?
The images provided of the trainers as sold, showed that the trademark had evolved. The words ‘Travel FOX’ were used on the inside of the tongue of the shoe in plain non-styled capitalised lettering alongside an unregistered variant of the logo, and with the original logo displayed prominently on the exterior of the trainer. The evolution of the Mark in this case creates two interesting questions to consider, Firstly, does the change of font and capitalisation in the Travel FOX lettering affect the distinctive character of the Mark; and secondly, does the variation in the spatial positioning of the components of the Mark alter the distinctive character.
When considering the questions the Appointed Person reasoned that neither the adoption of plain capital script with a variant logo, or the placement of the two elements of the Mark on different locations of the same product, would significantly alter the distinctive character.
This decision (if followed), ultimately means brand owners will be afforded some flexibility in how they develop and use their trademarks without having to register all elements of a composite Mark separately. However, the reasoning in the particular decision is not arbitrary, and turned largely on the specific facts of this case.
Albright IP recommend that trademark owners still take active steps to register new evolutions to their trademarks, and that they seek to register the individual components in as far as possible. By so doing, they will avoid uncertainty, and be in a position to defend or enforce their rights, as befits any future situation.