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Intellectual Property Office act before Capital Group

Written by Mark Reed on 10 May 2019

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The Capital Group is a financial services company who may have all the money in the world and the might of Hercules, but they couldn’t muster up an argument to protect its registered trade mark before the Intellectual Property Office (IPO) could rule.

The ruling came after a company called CAMcap Markets filed to register a trade mark called CAMcap in 2017 and Capital Group opposed this filing because of an argument that it infringed on its earlier mark AMCAP. The CAMcap mark was filed written in a dark blue font which was bold and on a black background with a red full stop which was similar to that of the registered AMCAP mark and both marks are for use in the financial services sector. This is of course evident in the application process when the mark is apportioned in to classifications between 1-45 depending on the goods and services that are to be marketed under the brand. Financial Services are covered under class 36.

When the IPO considered both marks and compared them, they are looking to see if there is a likelihood of confusion between the two in the eyes of the average consumer. In this instance the comparison would be firstly within the use of capital letters for the first three letters and then to lower case but also the stylisation. Both are key requisites for the examination board to determine whether there is a likelihood of confusion.

The visual similarity was considered as ‘lower than average’ and the use of capital letters next to lower case letters to be less than likely that a consumer would see the mark as anything but two separate words. The other consideration was given to the addition of the letter C in the CAMcap mark and it was held that the mere inclusion of this letter completely changes the nature of the mark including how it sounds when spoken. The IPO said that the hard sound of the C when spoken changes removes any likelihood of confusion against a softer sound within the letter A when spoken.

One thumbs up that Capital Group did get was from the similarities within the stylisation of the two marks. It was considered that the obscurity of the way that the black background with a dark blue font was worth consideration for likelihood of confusion and deemed similar. However, the it was found that “it would not make a material difference to the comparison of the marks since it is unlikely that consumers will ‘miss’ the letter C in CAMcap’s mark.”

When filing for a trade mark, it can be a minefield to attempt to differentiate one mark to another to be unique, especially in this day and age but it is also important not to let a registered mark either monopolise or dominate a sector. That is where Lawdit can help. We deal on a daily basis with enquiries from clients who have had a mark opposed or are having scary letters accusing of infringement.
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