IP, Technology & Data

Friday lunchtime reading took me to an analysis of the Intellectual Property Office’s recent decision in “application no. 2410422 for the registration by Mr Stanley Edward Snelgrove of the trade mark Sparklycard”. Click here to read the full decision.

At the risk of spoiling the ending, Barclays Bank was unsuccessful in opposing the application to register Sparklycard as a trade mark, despite the fact that the Sparklycard application covered much the same ground as Barclays’ various registered trademarks for Barclaycard.

The key determining factors would appear to have been the obvious visual differences between the two marks, and the nature of the goods and services involved here. The IPO placed a lot of emphasis on the care which a customer would normally take in choosing a credit card and the fact that, one way or another, a customer will generally be clear on who he or she is dealing with by the time he or she has completed the card application process. That meant that Barclays failed to show the necessary likelihood of customers being confused into thinking that Sparklycard was provided by Barclays or that consumers would choose to sign up for Sparklycard on the basis of a mental association with the better known Barclaycard, thus taking unfair advantage of Barclays’ undoubtedly strong reputation in that brand.

Mr Snelgrove would appear to have withdrawn his trade mark application in the meantime, suggesting that we may not be able to carry a Sparklycard any time soon. However his case underlines the fact that owners of big brands can’t stop the registration of other marks simply because they are a clever play on the words which make up their own trade marks. Taking trademark law back to its original purpose, trademarks are badges of trade, allowing purchasers to understand who they are buying from and what to expect by way of quality in goods or services sold under that badge and allowing the trademark owner in each case to prevent others from benefitting from those expectations. It follows then that trade mark owners are only entitled to prevent the registration of other marks to the extent that that would interfere with that function.

Of course the alternative analysis is that the hearing officer just wanted a Sparklycard. I will leave it to you to decide.