Trade marks professionals and supporters of the underdog alike are buzzing today over reports of Ikea’s opposition against an application to register the trade mark “Stylkea”.
Touted as a ‘David and Goliath’ battle, Ikea is seeking to prevent the use of the ‘-kea’ suffix, on the basis that consumers may be misled into believing an association between the flatpack giant and ‘mumpreneur’ Kylie Hughes, who sells adhesive embellishments for Ikea furniture under the Stylkea brand.
It should come as no surprise that Ikea would seek to ensure another business operating in the same industry is not confused with its own valuable brand. It is good business practice for companies to monitor for use of confusingly similar brands, as failure to do so may lead to consumer confusion, reputational damage and brand dilution.
A recent decision of the Delegate of the Registrar of Trade Marks dealt with a similar issue wherein PayPal successfully opposed the registration of FinPal word and logo marks.
PayPal opposed FinPal’s application under section 60 of the Trade Marks Act 1995 (Cth), namely that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
The Delegate determined that the PayPal trade mark had indeed acquired a significant reputation in Australia before the FinPal marks were filed. In its decision, the Delegate noted that a:
“significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the Opponent’s trade marks and the FinPal Marks if it were used to the extent of all of the goods and services listed in the opposed applications”.
As a result, the FinPal marks were refused registration.
Ms Hughes may well be subject to a similar decision in the coming months in respect of her Stylkea brand, despite her purported ‘research’ prior to filing.
While IP Australia continues to encourage DIY trade mark applications which will continue to be filed without considering these important issues, we take this opportunity to remind business owners that:
- Business and domain name registrations do not provide exclusive rights in a name – only trade mark registration does this;
- Specialist trade mark searches should be undertaken to determine whether there is a likelihood of conflict with a prior mark. A qualified trade marks professional is the best person to provide this advice, ideally before launching a new brand; and
- Once you secure your brand (whether or not it becomes as successful as Ikea), it is vital to have a clear intellectual property protection strategy, including monitoring for potentially infringing trade marks.
If you would like assistance carrying out pre-filing searches for a new brand, or developing an IP protection strategy for an established trade mark, please contact the Trade Marks Team directly at email@example.com or firstname.lastname@example.org.