Geely

Putting the brakes on a trade mark opposition

Geely Holding Group Co., Ltd is a multinational automotive manufacturing company. In May 2016, it filed an application to register the trade mark LYNK&CO in the UK. This covered a range of goods and services in classes 12 and 37, and was published in the Trade Marks Journal for opposition purposes in August 2016.

Case Study

Case Type

Opposed trade mark application

Action

Trade mark opposition defence

Outcome

Successful defence and costs award

Issue:

Ford Motor Company filed an opposition against the application on the basis that the trade mark LYNK&CO is confusingly similar to their earlier trade mark registration, LINCOLN. Furthermore, Ford claimed the application covered goods and services which are identical or similar to those covered by the earlier trade mark (which also covers goods in class 12). As such, Ford believed that a likelihood of confusion on the part of the public would exist.

In addition, Ford argued that it has a reputation in the LINCOLN brand and, as such, any use of the trade mark LYNK&CO by Geely would “free ride on the advertising and promotion of its mark”. Ford also argued that the registration of LYNK&CO would be detrimental to its reputation and business, and that its rights in the mark would be diluted.

Action:

The opposition was defended by Geely on the grounds that the trade marks LINCOLN and LYNK&CO are not similar, and Ford was put to strict proof of use of the trade mark LINCOLN.

Ford prepared and filed evidence in order to try to show that there had been use of the trade mark LINCOLN in the UK. This included references to DVLA listings of the number of LINCOLN cars on the road in the UK and search hits for LINCOLN cars on the Top Gear website. It also showed that there were some third party, second-hand sales of LINCOLN cars in the UK.

The parties requested that the opposition proceed to hearing. Geely was represented by UDL’s Alan Fiddes and Ford by Michael Edenborough QC. During the hearing, it was put to Ford’s counsel that his client did not:
• offer any vehicles for sale in the UK under the trade mark LINCOLN
• offer any service back-up for LINCOLN vehicles in the UK
• market or advertise LINCOLN vehicles in the UK
• import and/or register LINCOLN vehicles, either new or second hand, in the UK
• have any agreements with third parties for them to offer any of the above in the UK.

Ford’s counsel did not confirm or deny the above points. However, he did argue that because Ford hadn’t tried to prevent third parties from registering and offering Lincoln vehicles for sale, Ford could still rely on this activity to maintain its trade mark registration.

Outcome:

UDL was successful in its defence of the trade mark opposition. It was decided that Ford was unable to show genuine use of the trade mark LINCOLN in the UK. As such, its opposition against the LYNK&CO application failed and costs were awarded to Geely.

The decision can be viewed in full here.

For more information please contact Alan Fiddes amf@udl.co.uk or Gareth Price gip@udl.co.uk.

0113 245 2388

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Alan is an expert in all aspects of trade mark law; in particular the management and exploitation of trade mark portfolios. He also has extensive litigation experience and was one of the first trade mark attorneys to qualify for litigation rights. Alan also has substantial experience in dealing with the intellectual property aspects of corporate transactions.

Alan entered the profession in 1987. Prior to joining UDL in 2002, Alan worked for two of the largest law firms in the UK and was the head of the trade marks department of a major international law firm. He has been a partner since 2004.

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