Trademarks are registered against classifications, meaning they permit you to use the brand for certain pre defined activities. You set the business categories you wish to use for your trade mark in your application. This means the scope of your rights in the name or logo is limited.
There are 45 classes of goods and services with thousands of descriptions in each class so it is quite common to have the same names registered by businesses operating in different classifications – that is, business areas. Evidently for the public there is unlikely to be confusion between, say, a law firm that shares the same name as a chemical factory.
TFL have registered a number of trade marks for LONDON UNDERGROUND including for the logo UNDERGROUND. One of their latest registrations for UNDERGROUND was an EU mark granted in April this year. This mark is registered for rather surprising classifications for a predominately transport service, such as a nail products. They also cover café bar and restaurant services in their applications. It seems likely that TFL are not actually using their mark for all these classifications.
Nonetheless, the Underground Restaurant, a business organising supper clubs across London, found their application to register a trade mark opposed by TFL on the basis that ‘confusion could arise’ in the eyes of the public.
Some trade mark owners try to lock out others from classifications by registering in a number of classes. For example, Red Bull chose to register in all 45 classes with the clear intention of not sharing their name with non competing businesses. But trade mark owners that do not use a classification for 5 years may be challenged for non use.
So, TFL has 5 years to begin to use its UNDERGROUND trademark registration. Having registered in 2010 it will be valid for restaurant services for the next five years.
Brands of reputation
Once a brand becomes well known different rules apply. Their reputation allows them a wider scope, including to prevent non related businesses sharing their name. If others are taking unfair advantage of their name, or it would be detrimental to the brand for others to use the same name, such applications to register would not succeed. For example although TWITTER is widely known as a social media interface and has registered a trade mark for this activity, they have been able to thwart attempts by others to register the mark TWITTER for bird feed, drinks fitness information and precious metals.
TFL is using similar arguments in their letter to the owner of The Underground restaurant stating our ‘Client is also concerned that your use of The Underground Restaurant trade mark could be detrimental to our client’s brand’
Interestingly, however, unlike the word TWITTER which is clearly a fanciful concoction, the trade mark UNDERGROUND is both a logo, which should diminish the power of the word element, and UNDERGROUND is a generic term, and arguably descriptive.