Our team: Ben Milloy
When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when Simon Cowell heard about the name (via Mr Duffy’s application to register it as a UK trade mark in classes 9 (software) and 41 (entertainment services)) we can guess he probably wasn’t smiling (or if he was, it was probably more of a grimace). Instead, and acting via his company Simco Limited (in conjunction with Freemantle Media) (Simco), Mr Cowell wasted no time in instructing his lawyers to oppose Mr Duffy’s application, which he had made via his company Duf Ltd.
Simco opposed the application on numerous grounds under the Trade Marks Act 1994 (TMA), relying on both registered and unregistered rights in THE X FACTOR (X Factor brand). An important element of Simco’s opposition was the significant reputation and goodwill that it said had developed in the X Factor brand since the singing competition first aired in 2004. Simco argued that THE PETS FACTOR (Pets Factor brand) would amount to a misrepresentation of the origin of Mr Duffy’s proposed services (so-called “passing off”), and was therefore prohibited under section 5(4)(a) TMA.
Relying on several word and logo mark registrations in the UK and EU for goods and services including computer software and entertainment services, Simco claimed under 5(2)(b) TMA that the similarity of signs and goods/services meant that there was a likelihood of confusion and/or association between the brands. Further, based on the substantial reputation developed by the long-running TV show, Simco argued under section 5(3) TMA that the Pets Factor brand would “without due cause take unfair advantage of, or be detrimental to, the distinctive character or the repute of” the X Factor mark.
On the initial comparison of signs, the tribunal hearing officer, Oliver Morris, found that the two marks shared a medium degree of visual similarity (with a slightly higher degree of similarity on an aural level). However, despite Simco’s attempt to argue that THE PETS FACTOR would be seen as a play on THE X FACTOR phrase, he did not consider that there was any conceptual similarity per se between the marks.
Opposition on grounds of passing-off
Despite accepting the significant goodwill and reputation generated in the X Factor brand, the claim in passing-off failed for lack of misrepresentation, as Mr Morris was not ‘satisfied a substantial number would assume that the programme was the responsibility of, or otherwise connected to [the X Factor show]’. Despite any suggestion that X Factor performances have been steadily deteriorating for some years now, for Mr Morris at least, “the move from a singing competition for humans, to some form of pet talent show, would not be a natural move”.
Opposition on grounds of registered trade mark infringement
On the registered trade mark claims – notwithstanding the medium level of similarity between the signs and identical ad/or similar goods/services – no likelihood of confusion between the two marks was established.
This meant that Simco’s hopes rested on its claims under section 5(3) of TMA, which required it to satisfy three limbs. Firstly, it had to demonstrate a “reputation” in the X Factor brand for certain goods and services. Secondly, it had to demonstrate that the public would make a “link” between the Pets Factor and X Factor brands. Thirdly, it had to show that the registration and/or use of the Pets Factor brand would either provide Mr Duffy with an “unfair advantage”, or would cause detriment to the repute (so-called “tarnishing)” or distinctive character (“dilution”) of the X Factor brand.
Mr Morris found that Simco did have the necessary reputation for a television entertainment programme (albeit not for all the goods and services claimed). He was also satisfied that the Pets Factor brand would “bring to mind” the X Factor, establishing the necessary “link”.
This just left the third, and often most challenging limb for opponents to overcome. Happily for Simco, Mr Morris found that Mr Duffy’s behaviour did amount to an “unfair advantage”; in his view, the relevant public would “assume that the television series offered under [the Pets Factor brand] was similar in nature or character to those of [the X Factor brand]” leading to “an attraction towards the applicant’s service that may not otherwise have been there”. The consequence was “riding on the coattails of the opponent – freeriding”. On the question of whether this was unfair, Mr Morris considered that it was improbable that Mr Duffy would not have had the X Factor in mind, and that his intention would have been to bring the earlier mark to mind.
On the question of tarnishing, Mr Morris concluded that 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”. As to dilution, which generally requires “evidence of change of economic behaviour of the average consumer of the goods and services” (or a serious likelihood of such change), Mr Morris could not conclude that the public would “switch allegiance” (i.e. no dilution of the X Factor brand would occur).
Simco was ultimately successful in stopping the registration of the Pets Factor brand in class 41 (television and entertainment services) and certain class 9 services (such as recording discs). However, it failed in relation to certain class 9 goods (such as computer software), where no unfair advantage could be established.
Simco’s scope of protection was therefore relatively narrow, leaving the door open for Mr Duffy to return with a pet grooming app under the Pets Factor brand (or something else sufficiently distinct from a TV show, or music-based offering).
Trade mark protection is mostly thought of in terms of confusion in the marketplace. In this case though, the risk of any confusion amongst the public was probably low to non-existent. Nevertheless, Simco was able to succeed on the basis that it would simply be unfair for Mr Duffy to benefit from the reputation Simco had built up. In this sense, the decision demonstrates the perils of any form of mimicry when adopting a brand, particularly where the brand being imitated has an established reputation (and the brand owner takes its rights seriously).