Paw-city of evidence leads to loss in Dog Rough passing off case

Neox Limited has successfully defended its application to register the trade mark DOGROUGH (logo) in classes 18 and 25. Dog Rough Ltd, a music company that also sells branded merchandise, opposed the application on the ground of passing off, but the UK Intellectual Property Office (UKIPO) found that Dog Rough Ltd had not established any goodwill in the sign DOG ROUGH for the relevant goods and services, so was unable to prevent registration of Neox’s DOGROUGH logo.

The UKIPO decision provides guidance on the evidence required to prove goodwill for passing off, especially when the sign in question has low levels of trade and turnover. Some of the key points from the decision are:

• The opponent must demonstrate significant or substantial goodwill, or at least sufficient goodwill to be able to conclude that there would be substantial damage on the basis of the misrepresentation relied upon.
• The opponent must show that the goodwill is attached to the goods or services which it supplies in the mind of the purchasing public by association with the identifying sign under which its particular goods or services are offered to the public.
• The opponent should provide evidence of its turnover, volume of sales, customer base, market share and impact, and the nature and extent of its reputation for the relevant goods and services. Without at least some of these, it will be difficult to demonstrate substantial goodwill.
• The opponent’s evidence must date from prior to the relevant date. For assessing passing off this is the date of the application for registration of the trade mark, or the priority date if there is one, unless the applicant has used the mark before that date, in which case the position at the date of the start of the behaviour complained of must also be considered.

In this case, the UKIPO found that Dog Rough Ltd had failed to provide sufficient evidence of any of these factors. The only goods on which it had used the sign DOG ROUGH alone were guitar plectrums, and there was no information on when or where they were sold or how they were perceived by customers. The other goods, such as clothing and USB memory sticks, bore either a stylised lowercase d logo, the words "The Dog-Rough Music Co.", or other signs which changed the identity of the sign and its trade origin. The invoices and images provided by Dog Rough Ltd showed very low levels of trade and turnover, and there was no evidence of any reputation or recognition among the relevant public.

Further, the UKIPO discounted several pieces of evidence provided by the opponent, including website and social media screenshots, since the evidence either post-dated the relevant date, or lacked evidence as to its date.

The UKIPO decision is a reminder that passing off is a difficult ground of opposition to succeed on, and that opponents must provide clear, convincing and dated evidence of their goodwill and reputation in the sign they rely on. It also highlights the importance of choosing a distinctive sign for branding purposes, and of registering it as a trade mark early to avoid potential disputes.

If you have any questions about this decision or trade mark protection in general, please contact one of the following local CMS experts or your usual contact at CMS.

Article co-authored by Tycho Orton, Trainee Solicitor at CMS