IS TOYS “Я” US GOING TO THE DOGS?

Noteworthy UK trade mark opposition brought by Geoffrey Inc., proprietors of the TOYS “Я” US trade mark, against the National Canine Defence League’s (NCDL) application to register TOYS AREN’T US together with a stylised picture of a dog’s head for goods and services associated with NCDL’s fundraising activities. The main argument centred on s.5(3) of the Trade Marks Act 1994. NCDL conceded that Geoffrey had a reputation in its mark. The 2 marks were found to be similar. NCDL’s argument that the inclusion of the word AREN’T and the dog’s head negatived any similarity between the marks was rejected by the hearing officer. TOYS “Я” US was a highly distinctive mark, even though the idea behind it was a simple one and the NCDL’S mark, which was by its own admission “inspired” by Geoffrey’s mark, unambiguously captured the distinctive character of the earlier mark. While the negative message contained in NCDL’s mark might have avoided direct confusion, confusion is not necessary under s.5(3) and so just putting NOT in front of a mark does not provide a defence. Here the marks were similar because NCDL had gone beyond inspiration and into imitation.

Since a play or parody on a mark alone is not enough for an objection under s.5(3) to succeed, Geoffrey still had to make out one of the stated adverse consequences. No unfair advantage was taken of the TOYS “Я” US mark’s distinctive character or repute because there was no specific aspect of Geoffrey’s reputation for the retail sales of toys etc that would confer a significant benefit on the NCDL in relation to the mainly charitable goods and services for which it had sought the mark’s registration. Although Geoffrey had lent its support to certain charitable schemes, there was not a substantial enough connection for the public to expect the opponent to “be involved with charitable activities such that the mark in issue would be seen as an indication that the opponents support, or associate themselves with, the applicant’s activities.” While the IPKat agrees that it might be hard to show an unfair advantage where the two parties’ goods are so far apart that no one would ever impute the reputation even subconsciously from the earlier mark to the later mark, the hearing officer’s finding seems to be coming very close to requiring sponsorship or endorsement confusion which, as he himself said, shouldn’t be relevant under s.5(3).

However, Geoffrey succeeded on detriment to repute. While their argument that they would suffer from bad publicity as a result of suing a charity did not impress the hearing officer, the argument that the TOYS “Я” US mark would become associated in the minds of the public with cruelty to animals, particularly as the NCDL campaigned on emotionally charged and politically contentious issues such as the destruction of dogs and puppy farming did. The applicant’s use would bring wholly unwanted associations to a mark that had to maintain an appeal to children and parents alike in order to remain successful, even though consumers would know the opponent had nothing to do with cruelty to animals. The fact that the NCDL had laudable objectives and campaigned against the unpleasant activities was likely to be lost on consumers.

NCDL’s argument that all charitable use is, by definition, with due cause was also rejected. Charitable use doesn’t fall within the generally accepted definition of due cause in Lucas Bols (prior right to the mark or compulsion to use the mark). Also, there’s nothing in the European Trade Mark Directive (on which the UK Trade Marks Act is based) to suggest that there was meant to be a block exemption for charities. As a rule, charities aren’t exempt from the effects of legislation and it was highly improbably that the legislation was intended to give charities a free hand to exploit or damage other organisations’ marks. This would do real damage to traders who’d spent time and resources building up their brands for no particular public policy objective. An argument that use of another’s mark by a charity for a good cause would do less damage than other uses and so would likely be de minimis (de minimis detriment and unfair advantage isn’t caught by s.5(3)) was rejected for similar reasons.

NCDL was also found to have registered its mark in bad faith because it adopted a mark that was calculated to bring the TOYS “Я” US mark to mind without considering the effect on Geoffrey’s business (even though it had no subjective intent to cause them harm). Such disregard for the consequences of its actions fell short of the standards of acceptable commercial behaviour.

Finally, Geoffrey’s argument based on passing off under s.5(4)(a) failed because the negative in NCDL’s mark and the distance between the two parties’ goods meant that consumers would not think that there was a link between the two parties so the misrepresentation element of passing off was missing.

The IPKat says: “An important issue that wasn’t considered here is whether there are certain marks that become so ingrained in everyday speech that third parties should be allowed a degree of latitude in making use of them in the interests of free and easy communication. Perhaps the correct place to consider this may be in the fairness element of ‘unfair advantage’, but the hearing officer never got this stage because there was no advantage, unfair or otherwise.”

Toy dogs here and here
Dog toys here
Talented dogs here and here