Cavern City Tours v Laduma
Aisha Wardell and Cordelia Payne of Acuity Law have successfully defended a trade mark opposition case for their client, Laduma, an immersive virtual reality and technology business, at a recent tribunal hearing.
Laduma filed an application for a UK registered trade mark for the logo mark 'The CAVRN' on 23 October 2017. Cavern City Tours (“Cavern”) opposed the application, citing sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (the “Act”).
Cavern based its opposition on a number of its UK and EU trade mark registrations connected with the Cavern Club in Liverpool, known for its association with the Beatles. These included registrations for the word mark “Cavern Records” in respect of tech, communications, virtual reality, multimedia and graphics, and a logo incorporating the words “The Cavern Club Liverpool” in respect of CDs, DVDs, records, photographs and other related souvenirs and the organisation of shows and hotel services. In total, Cavern raised eleven trade marks at the tribunal hearing. Two of the marks relied upon by Cavern were logos whilst the remaining nine were word marks, each incorporating the word 'CAVERN'.
Relying upon section 5(2)(b) of the Act, Cavern argued that there would be a likelihood of confusion to the average consumer between Cavern’s registrations and Laduma’s “The CAVRN” mark applied for in respect of similar services such as VR media, online advertising, social media communications, the internet and telecommunications.
Pursuant to section 5(3) of the Act, Cavern also claimed to possess the requisite reputation which would cause the public, on seeing the logo mark “The CAVRN”, to believe that Laduma and Cavern were economically connected. Accordingly, Cavern claimed that Laduma was taking unfair advantage of Cavern’s reputation in its registered trade marks.
Additionally, Cavern opposed the trademark due to the goodwill which they had built for the unregistered signs “The Cavern” and “The Cavern Club” since 1957. Under Section 5(4)(a) of the Act, they argued that the application would therefore be a misrepresentation to the public and required prevention in order to avoid passing-off.
The tribunal held that while Cavern’s registered trademarks all incorporated the word CAVERN, which was similar Laduma’s logo application, the goods and services protected were conceptually distinct from Laduma’s and there would be no likelihood of confusion on the part of the relevant public. With no link arising in the minds of the relevant public, no consequent damage to Cavern would be caused nor would Laduma gain an unfair advantage if Laduma’s application was granted registration. Cavern also fell short of proving the requisite reputation and the absence of customers, actual sales and promotion indicated insufficient goodwill for any claim of passing off to succeed.
Accordingly, the opposition failed on all grounds and Laduma was awarded legal costs on the upper scale by the tribunal.