Computers yes, lamps no
Of course HP won the opposition, but not by as wide a margin as I had expected, as I read in the decision of 29 July. Registration of the SP logo is refused for various electronic products such as computers and electric batteries. According to EUIPO, these products are too close to HP’s products, meaning there is simply a likelihood of confusion. However, the SP mark was also applied for in relation to products that are further removed, such as lamps, vehicle lighting and air purifiers. For those products, the Chinese company is allowed to register its mark.
Well-known marks
I genuinely thought HP would also have been able to stop these remaining products on the basis of the strong reputation of its logo. After all, well-known marks enjoy very broad protection. Even where there is no likelihood of confusion, but consumers will nevertheless make a link or an association between the marks, this may already amount to trade mark infringement. This is also how well-known brands are often able to take action against the use of a similar mark for dissimilar products.
Reputation not proven
So what went wrong here? It turns out that HP simply failed to establish the strong reputation and renown of its mark. Although the company submitted a considerable amount of evidence, including invoices, turnover figures and even references to sponsorship agreements with Scuderia Ferrari and Real Madrid, EUIPO still considered this insufficient to establish the reputation of the HP mark.
No objective evidence
Yes, the documents point to substantial commercial activity involving the mark, but that does not necessarily mean that the mark also enjoys a reputation, according to EUIPO. HP’s assertion that it is “one of the global leaders in printers, computers and laptops” was likewise not supported, in EUIPO’s view, by independent and objective evidence. Nor did HP submit evidence showing the impact of its sponsorship activities, such as consumer surveys or other objective material demonstrating that the public recognizes the mark.
Reputation is not simply assumed
In short, this is another tough lesson: even though the people at EUIPO will undoubtedly be well aware that the HP logo is world-famous, its reputation will still not simply be taken for granted in a decision like this. Even globally famous brands need to produce concrete, objective and verifiable evidence of their reputation. Only then will they benefit from the broader protection to which a reputed mark is entitled.
Bas Kist
Takeaways for trade mark owners: make sure your reputation evidence is EUIPO-proof
- Do not rely on the fame of your brand alone. Even a trademark like HP is not simply credited with having a reputation. Reputation must be proven, not assumed.
- Invoices and turnover figures are not enough. They demonstrate commercial activity, but on their own say little about how well known the mark is among the relevant public
- Substantiate market share and market position objectively. Use annual reports, market research, industry data and other independent sources.
- Submit evidence of actual brand awareness. Consumer surveys, brand-awareness studies and media analyses carry more evidentiary weight than internal sales figures..
- Make sponsorship measurable. A sponsorship agreement with a top football club or Formula 1 team does not in itself prove that the public knows the brand. Also demonstrate reach, media exposure and brand recognition.
- Build a reputation file before you need it. Systematically collect evidence of market share, advertising expenditure, press coverage, awards, surveys and consumer awareness. That way, you will be prepared for oppositions and other proceedings.
Banner Photo by Mahrous Houses on Unsplash
