May 2019. Transport for London (TfL), the local government body responsible for the transport system in the UK capital, has failed to halt the European registration of the Coffeebar logo by a Greek entrepreneur.

Left: Transport for London’s EU trademark registration; right: the Coffeebar logo application

No confusion

According to the Opposition Division of the European Trademark Office EUIPO, TfL was unable to demonstrate that the Underground trademark was sufficiently distinctive; it also concluded that the evidence submitted by TfL was not convincing. The scope of protection for the trademark was thus limited. EUIPO also concluded that there was no risk of confusion since the trademarks were too different, and the distinction between the words Underground and Coffeebar naturally also played an important role.

Transport for London also based its case on a number of non-registered trademarks

Non-registered trademarks

In addition to its registered European Underground trademark, TfL threw a number of non-registered UK trademarks into the ring. In contrast to most EU countries, the UK protects non-registered trademarks under certain circumstances. Unfortunately for TfL, this didn’t help either, since the trademarks didn’t prove that the goodwill enjoyed by the Underground logo extended to catering services.

Insufficient evidence

This looks like another instance of the filer of the opposition underestimating the burden of proof required. You’d think it would be easy to show that the London Underground logo was widely recognised: if TfL had managed that, it would have greatly increased its chances of victory.

Bas Kist