The Intellectual Property Office (IPO) has ruled in favour of Uni Excellence Limited – a business offering advice and insight to prospective law students.
The University of Law – also known as ULaw and ULAW – opposed Uni Excellence Ltd’s application to trademark a logo that used the term ‘UniLaw’.
The University of Law opposed the registration of ‘UniLaw’ on the basis that it was similar to a trademark that had already been registered by them, and that both trademarks were to be registered for goods or services identical with or similar to those for which the earlier trademark is protected.
While the University of Law partly succeeded under section 5(2)(b) of the Trade Marks Act 1994, its opposition under sections 5(3) and 5(4)(a) both failed.
The IPO compared the two logos, noting that the main similarities between them was that they both begin with the letter “U”, and contain the word “Law”. However, it noted that there were a number of differences, including the use of the scales device, the fact that Uni Excellence’s mark was effectively made up of two words, and includes a strapline detailing the nature of their services. On the other hand, the University of Law’s trademark offered no indication of what services they offer and could not have therefore established a reputation in the trademark ULAW for a set of goods or services. It also held that the use of the phrase ‘ULaw’ by the University of Law was not sufficiently similar to the phrase ‘UniLaw’ to justify rejecting the application.
They thus concluded that there was a very low degree of similarity between the marks:
“Conceptually, anyone unfamiliar with the opponent’s mark will be bemused by the mark and have no clue what the goods or services offered are all about. The applicant’s mark clearly indicates that the user will assist one to get into studying law at a university or college. Overall there is a very small amount of similarity which is far outweighed by the differences. I therefore conclude that there is a very low degree of similarity between the marks.”
The University of Law was ordered to pay £2700 in costs to Uni Excellence Limited. The decision is open to appeal.
Stella Maris Solicitors LLP can deal with intellectual property issues for you, including trademarks. If you need more help, or have any issues please do not hesitate to contact us via email at firstname.lastname@example.org or telephone on 01793 296118.