13 July 2018

Trump wins again with Trade Mark opposition at UKIPO

The UK Intellectual Property Office (UKIPO) has refused to register a trade mark for TRUMP TV after the application was opposed by a company connected to US President Donald Trump. The UKIPO announced its decision to refuse the application on 4th July.

In October 2016, Trump International, a programming and broadcasting company, filed an application to register the words TRUMP TV as a UK trade mark in classes 38 and 41 covering telecom services and the production of radio and TV shows, as well as other educational and entertainment services.

The application was published for opposition purposes in January 2017. DTTM Operations LLC (DTTM), the company responsible for handling part of Trump’s trade mark portfolio, filed opposition to the application based on Trump International’s marks’ similarity to its earlier trade marks.

The cited DTTM trade marks are EUIPO registrations of the word mark TRUMP registered in class 41 and the device mark which depicts a family crest with three lions and the name TRUMP.

According to DTTM, Trump International’s trade mark as applied for is similar to the earlier registered marks phonetically, conceptually and visually and is applied for in respect of similar services and would therefore take unfair advantage of DTTM’s earlier word mark and have a negative impact on its reputation. DTTM also referred to its earlier unregistered rights to the trade mark TRUMP, which it claimed has been used in the UK since 2007.

DTTM further argued that Trump International acted in bad faith. DTTM said Trump International’s trade mark was applied for before the business was incorporated and that Trump International misled the registrar “as to the ability of the applicant company to hold it”. In response, Trump International argued that the marks are not visually similar as its trade mark as applied for consists of two words, while the earlier marks just contain the word TRUMP. It also claimed that the trade marks are phonetically different as TRUMP TV contains three syllables as opposed to just one.

The Hearing Officer Mr. Matthew Williams, of the UKIPO, agreed with DTTM and refused the application based on the grounds of bad faith.

Mr. Williams said that, the Applicant applied for the TRUMP TV trade mark with no evidenced intention to use as a trade mark in trade, at a time when the businessman and TV personality Donald Trump Jr had gained especial global prominence in light of his final stages of presidential campaigning. This obvious coincidence appears calculated to maximise potential interference with the Trump brand in which the Opponent has a central interest, and which is an illegitimate purpose. Therefore a basis of bad faith was formed.

As the Trump International was the losing party they were ordered to pay DTTM £15,105.70.

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