Is social media changing the way trade marks are viewed?

In a recent, long-standing case involving fashion brand Zara, the retailer successfully blocked a travel company from registering a similar trade mark due to social media platforms ‘blurring’ the lines between products and services.

Here, we explain the key facts of the case and the impact this could have on trade mark holders in the future:

Background

In April 2009 Mr and Mrs Ansell filed an application to register a stylised EU trade mark for ZARA TANZANIA ADVENTURES covering a variety of services in classes 39, 41 and 43, including travel and tourism, education and training relating to wildlife, and travel agency services.

Industria de Diseno Textil SA (Inditex), more commonly known as the high-street shop Zara, filed a notice of opposition, relying on their earlier trade mark covering classes 39 and 41.

The Opposition Division partially upheld the opposition, but both Zara and Mr and Mrs Ansell appealed the decision. Then, in July 2017 the Board of Appeal allowed the mark applied for to proceed to registration in respect of the services in Classes 39 and 43.

Zara took the decision to the second board of appeal. Here it was decided that the marks were similar.

The impact of social mediaSocial media impact on trade marks

The most significant part of the decision made by the second board of appeal was concerning the risk of unfair advantage being taken of the distinctive character or the repute of the earlier trade mark owned by Zara.

It was decided that in recent years fashion marks have evolved outside of the fashion market and towards adjacent markets, for example food, restaurant services, hotels and temporary accommodation. Fashion magazines now combine fashion and travel articles, and social media allows influencers to tag both their clothes and where the photo is taken in one single picture. Social media bloggers are becoming more and more popular and this is now a source of information for a large proportion of the population. Therefore, it was argued that it could be assumed that there was a link between the clothing and the travel.

Zara maintained that, on account of the link between the industries and the strength of the earlier mark’s reputation and the high degree of distinctiveness of those marks, there is a risk that the owners of the mark applied for (Mr and Mrs Ansell) might, without incurring significant costs, introduce and popularise their mark on the market.

The court agreed and said that the fashion market has evolved into other markets and therefore there was a risk of unfair advantage.

What does the outcome mean for trade mark holders?

This case seems to suggest that the classes associated with a trade mark are not as important as they used to be. Due to the implications of social media the classes are merging and more association is drawn between products and services.

Although this could signal a change in the way trade marks are viewed in the future, you should still ensure that you have the relevant goods and services protected for your mark and be willing to show that they are in use in the relevant countries, if required.

Worried about the impact social media could have on your trade marks?

Contact our expert trade mark attorneys for a review of your current marks to ensure that your brand is fully protected against potential trade mark infringement. Call 0116 233 2626 or send us an email here.