Hi,
So I have a badge for sale on Amazon that is a stylised design of the word "Wham!", like one might see in a superhero comic.
Amazon have suspended this product, saying that it infringes on the trademark of Wham, a brand of Betterware (a company who make popular plastic kitchenware.)
I have argued that "Wham!" is different to "Wham" and that their logo looks nothing like the badge design.
Who is right?
I'm just curious, as I can't really argue with Amazon. They are a law unto themselves!
Thanks.
Query about specificity of trademarks
Re: Query about specificity of trademarks
Hi bbloke and welcome to the forum.
There are currently 10 registrations in the UK Trade Mark Register for the word Wham (including one for Wham!). At least 4 of these are owned by Valeo Foods Ltd who manufacture the Wham chooclate bar (under the brand Barratt's), one of which (see below) appears to fit the description of your badge. There are dozens of other registrations for word combinations which include Wham. Interestingly, I didn't find a registration for Betterware, but that may be because they own the mark through a nominee company. However I think it is more likely that their trade mark is registered in the USA and since Amazon is a US company they have accepted the claim even though technically speaking Betterware's mark could have no protection in the UK.
However none of that addresses your question. There are two factors involved in determining whether a sign (that is to say, an unregistered trade mark) infringes a registered mark. The first is the likelihood of confusion in the mind of a potention customer for the goods and services represented by the sign, and the second is whether the mark and the sign represent goods/services in the same category or in separate categories. The categories of marks are divided into classes. For example badges could be registered in several different classes, depending on their purpose: purely advertsiing would be in Class 35; a novelty item in Class 28, a badge on a garment might be in Class 24 or 25, while the badge on a car could be registered in Class 12 (Vehicles). If the sign and mark are for goods or services in totally different classes ( eg confectionery and fishing tackle) then the likelihood of confusion is very much reduced, but not eliminated. For example, a manufacturer of power tools such as DeWalt might also branch out into protective clothing and other articles for the building trade. And so a sign consisting of the word Dewalt for a hot drinks flask might easily be found to infringe the registered mark of DeWalt since a typical purchaser of De Walt tools might believe that the company had started selling flasks aimed at those in the building trades.
You also asked whether the inclusion or exclusion of the ! might make a difference. Generally speaking the assessment is made on the overall impression the sign or mark makes on the relevant consumer. For example, Valeo's Wham chocolate bar does not use an exclamation mark, but the comic graphic around the word conveys much the same effect as an exclamation mark
I'm sorry that none of this background helps to answer your question one way or the other. The simple answer is that, if a large company sells a lot of goods through Amazon and they complain about another smaller seller, Amazon are probably going to take the easy route and pacify their larger supplier. This is despite the obvious fact that your badge does not purport to represent anything but itself: it isn't advertsing for kitchen storage containers or indeed for chocolate bars, and so the likelihood that any of your buyers thinking that that was the purpose of the badge is close to zero.
There are currently 10 registrations in the UK Trade Mark Register for the word Wham (including one for Wham!). At least 4 of these are owned by Valeo Foods Ltd who manufacture the Wham chooclate bar (under the brand Barratt's), one of which (see below) appears to fit the description of your badge. There are dozens of other registrations for word combinations which include Wham. Interestingly, I didn't find a registration for Betterware, but that may be because they own the mark through a nominee company. However I think it is more likely that their trade mark is registered in the USA and since Amazon is a US company they have accepted the claim even though technically speaking Betterware's mark could have no protection in the UK.
However none of that addresses your question. There are two factors involved in determining whether a sign (that is to say, an unregistered trade mark) infringes a registered mark. The first is the likelihood of confusion in the mind of a potention customer for the goods and services represented by the sign, and the second is whether the mark and the sign represent goods/services in the same category or in separate categories. The categories of marks are divided into classes. For example badges could be registered in several different classes, depending on their purpose: purely advertsiing would be in Class 35; a novelty item in Class 28, a badge on a garment might be in Class 24 or 25, while the badge on a car could be registered in Class 12 (Vehicles). If the sign and mark are for goods or services in totally different classes ( eg confectionery and fishing tackle) then the likelihood of confusion is very much reduced, but not eliminated. For example, a manufacturer of power tools such as DeWalt might also branch out into protective clothing and other articles for the building trade. And so a sign consisting of the word Dewalt for a hot drinks flask might easily be found to infringe the registered mark of DeWalt since a typical purchaser of De Walt tools might believe that the company had started selling flasks aimed at those in the building trades.
You also asked whether the inclusion or exclusion of the ! might make a difference. Generally speaking the assessment is made on the overall impression the sign or mark makes on the relevant consumer. For example, Valeo's Wham chocolate bar does not use an exclamation mark, but the comic graphic around the word conveys much the same effect as an exclamation mark
I'm sorry that none of this background helps to answer your question one way or the other. The simple answer is that, if a large company sells a lot of goods through Amazon and they complain about another smaller seller, Amazon are probably going to take the easy route and pacify their larger supplier. This is despite the obvious fact that your badge does not purport to represent anything but itself: it isn't advertsing for kitchen storage containers or indeed for chocolate bars, and so the likelihood that any of your buyers thinking that that was the purpose of the badge is close to zero.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Re: Query about specificity of trademarks
Many thanks for your lengthy and informative reply!