This decision involved two oppositions in relation to UNICORN SHIMMER between Popaball Ltd and Unicorn Shimmer Co. Ltd .
In the first opposition Unicorn Shimmer Co. Ltd opposed a UK trade mark application for “UNICORN SHIMMER” and raised claims of bad faith and passing off. The opposition failed on the basis that prior knowledge of a mark before filing is not a sufficient claim to bad faith, if the Applicant is merely seeking to protect its own existing business. It further failed on the grounds of passing off, as the goodwill claimed was over a short period of time without demonstrating a substantial use.
In the second opposition, Unicorn Shimmer Co Ltd filed a trade mark application for “Unicorn Shimmer”, which was opposed by Popaball Ltd. The Registrar confirmed that, in this case, the marks are held to be identical where the only difference is the use of the upper or lower case, as this is insignificant and will go unnoticed by the average consumer. Given the identical marks and identical/similar goods there was a likelihood of confusion and the opposition therefore succeeded.
Passing off over a short period of time cannot be found without prior established goodwill and reputation or substantial takings Detailed evidence of reputation is key Prior knowledge of a mark before filing, and filing due to that knowledge, is not sufficient for bad faith