Irish businesses issued stark reminder to conduct thorough trade mark searches

This especially applies when dealing with marks that have acquired a substantial international reputation before adopting a trade mark. The decision also serves as a stark reminder for Irish businesses to conduct thorough searches before using a trade mark, and to ensure that their mark is sufficiently unique to avoid potential conflicts with other brand owners.

Regarding Irish Trade Mark Registration No. 256705 “OsKaRs”, the decision arose from an application for a declaration of invalidity filed by the Academy of Motion Pictures Arts and Sciences (the Academy), who contended that the “OsKaRs” mark infringed their earlier trade mark, “OSCAR”.

On 23 July 2017, Kevin Rowe, an Irish business man, registered the trade mark “OsKaRs” in Ireland under No. 256705 in class 36 (Fundraising; Charitable fundraising, Charitable fundraising services; Charitable fundraising by means of entertainment events) and class 41 (Entertainment; Live entertainment; Cinema entertainment; Theatre entertainment; Cinematographic entertainment services).

Almost three years after registration, the Academy applied for a declaration of invalidity of the mark under the Trade Marks Act 1996. The Academy argued that the “OsKaRs” mark infringed their well-known “OSCAR” trade mark. The invalidity action was grounded on the fact that the Academy had earlier registered rights in the EU and Ireland for the trade mark OSCAR and on the basis of its worldwide reputation.

In defence of his mark, Rowe submitted arguments noting differences in the spelling, colour and visual presentation of the respective marks as well as the lack of likelihood of confusion among the average customer. Rowe also argued that the similarity was restricted to phonetic factors only, that the services covered by the respective marks were different, and that the late filing of the invalidity action indicated no significant impact on the Academy.

The Academy presented substantial evidence to support its invalidity claim. The main arguments included that the “OsKaRs” mark was visually, aurally and conceptually similar to their mark. The Academy argued that the “Oscars” were first held in 1929 and since then have become known internationally as “The Oscars”, with the annual awards ceremony being broadcast internationally and viewed by an estimated 56 million people. Additionally, it said that the “Oscar” mark has acquired a very substantial reputation throughout the world in relation to entertainment services, namely the promotion of movies in the film industry, through the awarding of prizes, awards and tributes for movies, cinema shows and entertainment services.

Rowe had used the Academy’s well-known gold statuette design to advertise his event services and corporate event management business attempting to create the impression that his services were offered by the Academy or at least endorsed them. The Academy also argued that the services in class 41 were identical and those in class 36 intrinsically linked to class 41 services, particularly as “entertainment services are often used as a means to raise charitable funds”.

The controller considered visual, aural and conceptual similarity as well as comparison of services and the likelihood of confusion.

In considering the comparison of the marks, the controller referred to guidance set out by the Court of Justice of the EU in Sabel BV v Puma AG and Rudolf Dassler Sport. This case established that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Consequently, consideration of whether marks are visually, aurally and conceptually similar must be based on the “overall impressions given by them, rather than on specific points of detail that are likely to go unnoticed by the average consumer”.

The controller found a high degree of similarity between "OSCAR" and "OsKaRs" in all three aspects. Visually and aurally, the marks were nearly identical. Conceptually, both marks conveyed a similar impression related to awards and entertainment.

The services covered by both marks in class 41 were found to be identical. Although there was no direct overlap in class 36, the controller considered that the earlier "OSCAR" marks had a reputation in entertainment services in Ireland and the EU. Therefore, the use of the “OsKaRs” mark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier mark.

The controller considered the possibility of direct and indirect confusion among the average consumers. The controller reiterated the principle that when considering likelihood of confusion among customers, the question was whether it was likely or not that the average person would be confused during the typical purchasing scenario. Given the similarities of classes between the marks, the likelihood of confusion was deemed significant. The controller deemed it unlikely that Rowe would have called his business “OsKaRs” if the organisation, business and reputation of the Academy had not existed.

The controller concluded that Rowe’s mark "OsKaRs" infringed the Academy’s "OSCAR" mark under the 1996 Act. Accordingly, the application for a declaration of invalidity was upheld, leading to the invalidation of Irish Trade Mark Registration No. 256705.

The decision serves as a crucial reminder for trade mark owners to remain vigilant and proactive in asserting their registered rights. By actively monitoring and enforcing their trade marks, owners can better protect their brand identity and prevent potential infringements. This proactive approach is essential in maintaining the distinctiveness and value of their trade marks in the marketplace.

By conducting clearance searches in advance, businesses will avoid costly legal disputes.

Co-written by Isabel Humburg of Pinsent Masons.

A version of this article first appeared on Lexology.