Defending food and drink brand integrity: Pink Soda and JD Sports

This is the second case in our series of three in which we examine recent UK Intellectual Property Office (UKIPO) trade mark opposition decisions where major brands enforced their reputation and goodwill against applications filed by smaller companies. The first case we discussed is available here. 

The second case takes us to a dispute between a fashion brand and a food and drink product.

In this case (O-0413-24), JD Sports relied on its earlier reputation in the trade mark PINK SODA for clothing to oppose an application for an identical trade mark in respect of supplements and healthy snacks.

Given the identity of the marks, the matter turned on whether JD Sports enjoyed a reputation and whether the respective goods were close enough to form a “link” in the mind of consumers. The wrinkle in JD Sports case was that the evidence that they submitted in support of the alleged reputation did not strictly match the PINK SODA trade mark as registered. The evidence was of the following marks and so the applicant argued that such evidence should not support JD Sports’ case:

However, the UKIPO was satisfied that the use was acceptable because it was “unlikely to change the distinctive character of the mark” since “the word SPORT is entirely descriptive” and “the device of a heart also does not alter the distinctiveness of ‘PINK SODA’ because the latter retains an independent distinctive role in such use”.

The UKIPO then went on to examine the evidence of use in greater detail.  To establish a reputation, JD Sports submitted evidence covering a five-year period demonstrating sales of 2.6m clothing items for income in excess of £43m, with approximately £250k spent per annum promoting the trade mark including celebrity endorsements. Whilst the sales figures were “not particularly vast”, the UKIPO found that JD Sports demonstrated a “reasonable reputation” in PINK SODA in respect of “women’s sports and fitness clothing”.

As far as a link between a fashion brand and supplements and healthy snacks is concerned, at face value it is not immediately obvious.  However, the evidence submitted by JD Sports indicated that some online retailers of sporting/outdoor clothing also sell foodstuffs like nutritional supplements and energy bars and so the UKIPO was persuaded that a “link” existed.  In other words, the buying public may well anticipate or expect a sports clothing brand to sell energy bars, for example.

Given the identity of the marks, the reasonable reputation enjoyed by JD Sports and link between the goods being aimed at the same consumer, the UKIPO found that this would lead to an unfair advantage for the applicant. It concluded that consumers would be drawn to the applicant’s goods by a “sense of familiarity” and because the applicant’s goods would “appear more attractive and desirable to the relevant public” being associated with a sport/fit lifestyle.

Conclusion

This was another decision that exemplified the benefit of documenting trade mark use and having a pack of evidence to call on.  It is also worth including evidence of the general activity in the market and how that can demonstrate that seemingly different goods can in fact be considered related.  That was a crucial aspect of JD Sports’ success in persuading the UKIPO of the connection between sporting/outdoor clothing and nutritional supplements and energy bars.

Like the Ocado case, the decision also demonstrates the broad scope of protection afforded to plain words marks so that even use by JD Sports of a mark that included another word and a device was still considered use of the mark as registered.

For trade mark applicants the case demonstrates the importance of conducting thorough freedom to operate searches before launching a new brand.  A search should consider not only goods from the same market but also related markets with an eye on all of the potential product extensions.

If you would like to discuss any aspect of trade mark law or get advice on your own intellectual property, please contact Edward Carstairs or any of GJE’s attorneys at gje@gje.com.