The well-known and popular advertising tool Gumtree has come under fire after unsuccessfully trying to sway the UK Intellectual Property Office (IPO) to invalidate a ‘Gumtree’ mark belonging to an individual. The final decision was made by the IPO on Thursday October 11th.
The individual concerned Michel Maurer, sought to register ‘Gumtree’ for a selection of goods in classes 18, 25, and 28, this included leather bags, clothing, and sports equipment. The mark was then registered in 2016 (3,142,026). The ‘Gumtree’ mark is specifically used in relation to his own Gumbies-branded flip-flops.
During proceedings, Maurer claimed that he had been selling Gumbies flip flops for a significant period. Starting in 1993 in Australia. Following in the UK in 2006, and the platform now offers Gumbies flip-flops for sale.
Clarifying the Gumbies-Gumtree link, Maurer explained that “the Gumtree is a tree which forms an integral part of the Australian landscape,” this gum (latex) from the tree forms part of the flip-flops.
Gumtree applied to have Maurer’s mark declared invalid in 2017. An EU trademark for ‘Gumtree’ (3,930,989), registered in 2005 is owned by the advertising website.
The mark, which has been used throughout the UK since 2000, covers services in classes 35, 39, and 43. Gumtree relied on advertising and online information services in class 35 in its opposition to the IPO.
Considering the ‘Gumtree’ marks are absolutely identical and that they cover similar goods and services, the company claimed there is a likelihood of confusion between them.
Gumtree challenged that Maurer’s use of the mark takes unfair advantage of its earlier-registered mark by free-riding on its reputation and “illegitimately benefitting” from its marketing efforts.
In defence, Maurer explained that the earlier-registered mark does not have a reputation in the UK, he went on to deny that the services covered by the marks are similar.
The IPO concluded last week, that Gumtree’s earlier-registered mark has in fact been used in affiliation to the class 35 services it covers, and that it has a strong reputation and a high level of distinctiveness.
Even so, the IPO found that there is “no similarity” between any of the goods covered by Maurer’s mark and the class 35 services that come under Gumtree’s mark.
The IPO cleared up the fact that the very nature of advertising services is totally different to that of leather bags, clothing, and sports goods. It also went onto explain the method of use will also be different, and clarified that Maurer’s goods are not in competition with the services of Gumtree.
“Whilst classified advertising services may well be used to advertise the whole range of goods in the contested specification, along with many others, it cannot be said that any of the goods are indispensable or important for the use of the services (or vice versa),” the IPO expalined.
The IPO concluded that there is no likelihood of direct or indirect confusion between the marks.
Because Gumtree’s application for the invalidation of Maurer’s mark failed, the IPO ordered the website to pay Maurer £1,000 ($1,316) towards his costs.
Article by: Leanne Davies who is a student at Southampton Solent University.