David v Goliath - Small Business Fights Back At Trademark Bullying
Introduction
After a year of using the mark FINUTITY in the UK and Europe, Fintuity Ltd had built up a loyal user base. They had spent a significant sum in marketing their online financial software product for IFAs under the brand FINTUITY.
Our client's had applied to register FINTUITY in class 36 under UK TM number UK3328859 for financial services on the 02nd August 2018. Fintuity Ltd also attempted to register FINTUITY as a European Trade Mark under application number 018033412 in class 9, 36 and 42.
Opposition
Finutuity's application was opposed both in the UK and EU Community level by Intuit Inc of Mountain View California, an American business and financial software company that develops and sells financial, accounting, and tax preparation software. Intuit Inc own Quickbooks and quoted on NASDAQ and S & P 500 with operating revenue of $1.854 billion for 2019.
Fintuity would either have to rebrand and throw their company's name recognition and reputation into disarray or pay a substantial sum to lawyers to defend their territory.
We were approached in mid-January 2019 by Fintuity to represent them.
Intuit's advised by a top tier UK specialist IP solicitor's firm opposed our client's applications based on two earlier EUIPO right registration 5028741 and 014790133 in class 9, 16, 35, 36, 38, 42.
Arguments
Intuit argued that first the text mark INTUIT is similar to or identical or similar to goods and services for that which the logo mark FINTUITY is to be registered.
The litmus test is whether the similarities produce confusion or a likelihood of confusion. Importantly proof of reputation is not proof of confusion.
We argued amongst other things that the two marks are not confusingly similar because they do not fall within the lexicon of the mark INTUIT. The trademarks are pronounced differently and mean different things.
Second, to succeed, INTUIT must prove UK and EU reputation. That there is a detriment to the distinctive character of INTUIT by the use of FINTUITY. That FINTUITY will be taking unfair advantage of the distinctive character or repute of INTUIT.
We argued that INTUIT could not prove a substantial reputation. Although proof of confusion is unnecessary, the opposing party must show that the average punter must establish a link between FINTUITY and INTUIT, even if they are not confused. We argued that INTUIT could not get home on building that link.
Third - Passing off. To succeed in passing off you should ask, would FINTUITY dupe the average punter into thinking that INTUIT'S goods and services were FINTUITY'S goods and services? There was no evidence of passing off.
Conclusion
On the 11th March 2020, one year and six months after our client first tried registering its brand name; INTUIT withdrew its opposition to the FINTUITY trademark. On the 12th March 2020, the intellectual property office granted the FINTUITY trademark to our client.
Closing comment
It's critical that you don't give up when challenged about a trademark by the examiner or facing opposition from a third party.
Please contact our firm for advice on any trademark related matter– including digital projects; social media management; intellectual property rights management.
Disclaimer Notice
This article provides a case study of a recent trademark opposition. It is only a snapshot of the steps that were taken and the process. If you are seeking advice on a trademark-related campaign and have read this article, you must take the opportunity to go and seek professional legal advice from a solicitor or barrister. The information and any commentary on the law contained on this web site are provided free of charge for information purposes only. Every reasonable effort is made to make the information and commentary accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by PAIL® Solicitors. The information and commentary do not, and are not intended to, amount to legal advice to any person on a specific case or matter. You are strongly advised to obtain specific, personal advice from a lawyer about your case or matter and not to rely on the information or comments on this site. No responsibility is accepted for the content or accuracy of linked sites.
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The writer is a digital media and IP lawyer, owner and principal solicitor at PAIL® Solicitors. Peter Adediran's specialist niche area of practice is IP and website/mobile app compliance and contract law for SMEs, artists and management.