March 2018. Singaporean company Teng Yun has failed in its bid to register a round, red-blue logo for non-alcoholic beverages in the UK because it infringes the trademark rights of soft drinks giant Pepsi. The ruling was issued by the UK Intellectual Property Office on 28 February in response to a cancellation procedure filed by PepsiCo.
Not cut and dried
However, Pepsi’s victory wasn’t totally cut and dried. In fact you could say it was more a matter of touch and go.
Limited visual correspondence
To begin with, the UKIPO felt the two trademarks were only similar to a low degree – not, at any rate, similar enough to present a risk of confusion. It also concluded that there had been no copyright infringement or bad faith on the part of the Singaporean company.
So why did Pepsi prevail? Because it successfully argued that the Pepsi logo was well-known. And well-known trademarks are given extensive protection. To prove that its trademark is being infringed, the owner of a well-known trademark doesn’t have to go as far as proving there’s a risk of confusion between it and another trademark. It can be enough to argue that consumers would establish a link between them. So while the UKIPO agreed that the public wouldn’t necessarily confuse the two, it accepted that they might make a link between the two logos.
Pepsi’s logo and that of Teng Yun: not confusingly similar, but likely to be linked
That said, a link isn’t enough to constitute trademark infringement. The owner of a well-known trademark also has to show that the new trademark is taking unfair advantage of the well-known mark. And that’s the case here, the IPO has concluded, based on an advertisement placed by Teng Yun which was highly reminiscent of Pepsi. So trademark infringement was demonstrated just in time, thanks to the extensive protection given to well-known trademarks.
The Teng Yun ad in Singapore: highly reminiscent of Pepsi, showing a clear attempt to take unfair advantage of Pepsi’s logo