A recent UK Intellectual Property Office decision (O/0347/26) carries a practical lesson for anyone starting a new business or launching a new brand. That is, trade mark protection for a well-known brand can extend far beyond its obvious market, even into a field you might never have anticipated. The case is a valuable reminder that choosing a brand name requires careful thought.
What happened?
All Star C.V. (All Star), the company behind the well-known CONVERSE footwear brand, successfully opposed Simple Tire LLC's UK trade mark application for CONVERSE (word mark) in Classes 12 and 35 (the trade mark classes covering tyres and retail services for tyres) relying on the strength of its brand reputation. This was a deliberate strategic choice as rather than argue that trainers and tyres are similar goods (clearly they are not), All Star chose to rely solely on the strength of the CONVERSE brand (albeit in casual trainers).
Why did All Star win?
There were three main reasons for this decision by the Hearing Officer were:
- Reputation: the CONVERSE brand is exceptionally strong, meaning it is more likely to be brought to mind even outside its immediate field of footwear.
- Identity: The marks are identical which significantly lowers the threshold for establishing a mental connection in the consumer’s mind.
- An industry connection: Evidence filed by All Star supported a sufficient overlap between the tyre industry and the shoe sole industry for a link to be made in the mind of the relevant public. This comprised instances of tyre manufacturers developing footwear technology, including Michelin branded soles, shared reliance on rubber as a key material (soles and tyres), and even All Star's own historical origins in rubber production and tyre manufacture.
The Hearing Officer acknowledged that because of these factors, despite the fact that the goods are not similar, a substantial number of consumers would assume some form of business connection between the use of CONVERSE for tyres and the well-known footwear brand. Having established this, the Hearing Officer ruled that use of CONVERSE for tyres would give Simple Tire an immediate commercial advantage by trading off All Star's reputation and goodwill. This amounted to unfair advantage, and was sufficient to successfully oppose Simple Tire's application.
Key takeaways
- Reputation travels further than you might think: A brand with a strong enough reputation can prevent registration of an identical name even in a completely different industry.
- Identical names carry the highest risk: If your proposed name is identical (or highly similar) to a well-known brand even in a different sector, the risk of a challenge is real.
- Brand clearance must go beyond your immediate competitors: A trade mark search limited to your own product category may not be enough. Working with a specialist trade mark adviser ensures that broader risks, including well-known brands in other sectors, are identified before you commit to a name.
- Getting it right from the start is a competitive advantage: Trade mark disputes are time-consuming and expensive. Proper clearance and strategic brand selection before you launch is considerably more cost-effective than defending a challenge or rebranding, and gives you the confidence to invest in your brand from day one.
Trowers & Hamlins’ Intellectual Property team specialises in helping businesses, particularly new businesses and start-ups, to develop and implement trade mark and brand protection strategies. If you are launching a new brand or considering a rebrand, please get in touch.
