This decision shows that a high threshold of proof is required to be successful in trademark similarity and bad-faith allegations. Despite two competing marks sharing the same word, stylistic and emphatic differences can render them dissimilar. Even in those circumstances, sufficient distinction between those marks remains commercially acceptable and can rebut an allegation of bad faith.
This was the second of two decisions from the Principal Assistant Registrar (PAR) concerning the opposition actions from GCIH Trademarks Limited (GCIH) against Hardwood’s registering of the trademarks containing OT and TANGO. This action concerned Hardwood’s mark (Application No. 40201913705S) and GCIH’s mark (Registration No. T1006585A).
GCIH relied on the following grounds:
- Similarity with an earlier trademark;
- Similarity with a well-known mark; and
- Passing-off for purposes of its opposition.
GCIH also argued that the application was made in bad faith.
On the first ground, the PAR held that the competing marks, in their totality, were more dissimilar than similar. Visually, the highly stylized and unique face device that Hardwood used, and the composite nature of Hardwood’s trademark, displaced the commonality of “TANGO” in the competing marks, so “TANGO” was not the dominant element in Hardwood’s trademark. Conceptually, Hardwood’s trademark consisted of a distinguishing house mark juxtaposed with two crown devices around the word “TANGO”; this was conceptually different from the ordinary meaning of “TANGO” as a dance form.
Given that the competing marks were dissimilar, the PAR decided that the opposition should fail on all three grounds.
The PAR sympathized with GCIH’s allegations of bad faith: Hardwood had filed its application with the face and “TANGO” elements side by side even though its product packaging emphasized the latter, and had filed its application while the opposition proceedings against its earlier OT TANGO word mark were under way. However, the PAR held that this evidence was insufficient to establish Hardwood’s lack of bona fide intention.
As the opposition failed on all grounds, the application was allowed to proceed to registration in a decision issued on October 3, 2022.
GCIH should have cross-examined Hardwood’s director on his statutory declaration. Additionally, despite Hardwood allegedly knowing about GCIH’s prior use of the word “TANGO” in connection with chocolate or confectionery, it would not be commercially unacceptable to use or register a trademark containing the word “TANGO” in it if it contains sufficient stylization and other distinguishing elements.
This article was first published by the International Trademark Association on inta.org.