The X Factor v The Pets Factor, Trade Mark Opposition

The X Factor is a reality TV singing contest programme and franchise created by producer Simon Cowell, as I am sure readers are aware since the TV Format now airs in over 50 countries. You might be surprised to learn that a talent show for animals called The Pets Factor, is not in fact a spin-off programme from The X Factor... hence this trade mark opposition.

Now that's a show we'd watch!
Image: Stratman

Background

Duf Ltd applied to register a word mark “The Pets Factor” on 29 June 2017 in respect of Classes 9 and 41. Mr Mark Duffy, the company director, explained that The Pets Factor was a TV Format that was pitched to the usual TV companies and he had some interest from the BBC and All3media.

The registration was opposed by FremantleMedia Ltd and Simco Limited on the grounds of likelihood of confusion with their six earlier marks The X Factor. The opponents also claimed misrepresentation, passing-off and damage in the form of unfair advantage, dilution and tarnishing under section 5(3) Trade Mark Act 1994.

Passing off

Goodwill, misrepresentation and damage must be present for a successful passing off claim. The hearing officer stated that it was abundantly clear from the evidence that The X Factor is one of the most popular television entertainment programmes aired on UK television. It was accepted that The X Factor marks are very well-known to the UK general public within the television entertainment context. Therefore, it was accepted that the opponent easily established that it had a protectable goodwill at the relevant date associated with the television entertainment services it provides.

The opponents’ submitted that the services offered by the applicant under its mark would be perceived as being offered by, or connected with, the opponents. Essentially, that The Pets Factor would be assumed to be a programme using the same format as The X Factor, but focusing on pets. The hearing officer agreed that it was likely that a substantial number of members of the public would recognise the similarity between the names, and assume that The Pets Factor is some form of talent show involving pets. However, he was not satisfied that a substantial number would assume that the Pets Factor programme was the responsibility of, or otherwise connected to, the X Factor; stating that some may wonder, but that is all, since The X Factor is not known for branching out into other fields. Furthermore, the move from a singing competition for humans, to some form of pet talent show, would not be a natural move. [Unlike the Zara case where it was recognised that there's  currently a trend for trade marks in the fashion market to evolve towards other markets such as food and travel, Katpost here] Instead, it was found, The Pets Factor would be seen as a play on the name of the X Factor, but one which does not pass the test for a misrepresentation.

Likelihood of confusion

This Kat will be auditioning
image: Trish Hamme

The hearing officer stated that although the legal test for a misrepresentation differs from the legal test as to the existence of likelihood of confusion, it is nevertheless often the case that one finding follows the other. "Having guarded against blindly following on" he was nevertheless of the opinion that there was no likelihood of confusion.

This was based on their being no evidence of deception on behalf of the applicant, and the level of similarities between the signs. In a passing-off case, it is not necessary for the competing goods/services to be similar, but it is still a highly important factor. The opponents argued that the signs have the same syntactical construction (THE and FACTOR) and are the same aurally, due to the sound of “pets” and “eks” s. The hearing officer considered the level of similarity between the marks to be medium on a visual level, slightly more from an aural level, and no conceptual similarity.

Unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark

The law requires the opposition to demonstrate a) reputation of the earlier mark b) that the public would make a link between the two marks d) injury or a serious likelihood that such an injury f) detriment to the distinctive character of the earlier mark. 

It was accepted that the earlier mark held a strong reputation. As such, it was found probable that a large number of the relevant public would bring the earlier mark to mind on account of the inherent similarities between the marks, the identity of services, and the extremely strong reputation. Since The X Factor brand would be brought to mind, the view was taken that an obvious advantage would be gained when the relevant public saw the play on words and assume that the television services offered under the applied for mark are similar in nature or character to those of the opponents. This would lead to an attraction towards the applicant’s service that may not otherwise have been there, with the consequence that the applicant is riding on the coattails of the opponent without going through the marketing effort and expense of educating consumers in the same way as the opponents’ did.

In terms of whether this is unfair, the hearing officer considered it improbable that the applicant would not have had The X Factor in mind when it decided to create a programme called The Pets Factor. It would have been as obvious to it as it would have been to the relevant public. The intention would have been to bring the earlier mark to mind to gain the benefit described. This was particularly so since the director was involved in the TV format business and, on his own evidence, suggested that he had an early role in ITV’s pop star related programme. As such, this was sufficient to find that the advantage gained was unfair. The ground of opposition therefore succeeded in relation to television programmes. 

Damage: Tarnishing & Dilution 

The hearing officer rejected the claim that there was any detriment to the repute of the earlier marks, as there was nothing inherent in the applied for goods/services or the mark itself that would create a negative connotation that would rub off on the earlier mark, nor was there any evidence to suggest that the applicant’s goods and services will be inferior in any way...

It's a no from me
Image: Ewan Bellamy

It was noted that argument for dilution could be seen, but that it was difficult to see a negative impact on the capacity of the earlier marks to indicate the origin of its services, or for there to be any impact on the relevant consumer (of the opponents’ services). For example, there's no reason why the relevant public may more readily switch allegiance. Damage on the basis of dilution was, therefore, rejected.

The remaining goods and services

Finally, the hearing officer considered whether the ground of opposition applied for other than television entertainment services.

The unfair advantage finding was extended to all of the applied for services in class 41 as they had the potential to include some form of entertainment aspect. However, in relation to the class 9 goods, the opposition failed in relation to "cinematographic apparatus and instruments; computer software; computer game software; downloadable computer game software via a global computer network and wireless devices; video game software". This was because the link may not be made, and even if it was, it would be difficult to establish any form of advantage. 

Conclusion 

The opposition partially succeeded. As such, the application for registration was refused in respect of Class 9, 41 but may proceed to registration in respect of certain categories within Class 9 (listed above) and also in relation to the unopposed goods/services. Duf Ltd ordered to pay FremantleMedia Ltd and Simco Limited the sum of £1700.

Maybe The Pets Factor will become a new video game instead...