May 2018. Online food order and delivery company Just Eat has filed a successful opposition to a rival who attempted to register the trademark Just Pizza and Pasta. The UK Intellectual Property Office has now concluded that consumers could confuse the two.
In 2016, UK businessman Mitch Sorbie applied for trademark protection for his logo Just Pizza and Pasta. This prompted Just Eat to file an opposition based on two existing trademark registrations to the ‘Just Eat’ and another to the word ‘Just’ on its own.
The Intellectual Property Office focused largely on the registered word mark ‘Just’. Because the word ‘Just’ is also the most prominent element in the device mark Just Pizza & Pasta, consumers might think both trademarks come from the same undertaking. This would create a risk of indirect confusion. Just Pizza & Pasta was consequently refused registration.
Just Eat’s opposition was based on three registered trademarks, but the case was decided only on the word mark ‘Just’ (left)
Clever tactical move
It was a clever tactical move by Just Eat to register the independent word Just as a separate trademark as well, since doing so considerably increases the scope of protection afforded. After all, it is doubtful it could have won on the strength of the full trademark Just Eat. An important proviso in a strategy of this kind, however, is that if registered trademark rights are to be maintained, they must be actively used. Failure to do so within a five-year period risks the trademark being cancelled. In other words, if Just Eat does’nt use the word ‘Just’ as an independent trademark the word mark Just will become vulnerable after five years due to non-use. However, in this case that didn’t apply, given that the word Just was registered in September 2015.