eBay fails to stop registration of ‘UKBAY’ trademark

Online retail platform eBay has failed to stop the registration of a ‘UKBAY’ trademark, according to a UK Intellectual Property Office (IPO) decision delivered on Friday, November 16.

Games company SC ZuMedia Games applied to register a figurative trademark, with the word “UKBAY” next to a circular device, in pink and blue in 2017. The trademark covers classes 35, for advertising and business management services, and 38, for telecoms.

eBay filed an opposition to the mark during the same year, on the basis of its own earlier-registered trademarks.

Word mark ‘EBAY’ (UK trademark number 2,185,144) was registered in 1998 for advertising in class 35 and, in 2000, ‘EBAY’ was registered (2,221,802) for various services including telecoms, in class 38.

The retail platform also relied on two figurative EU trademarks: ‘ebay’ (11,576,865), in red, blue, yellow, and green, was registered in 2013 in various classes, including 35 and 38, while ‘bay’ (12,995,833), in blue, yellow, and green, was registered in 2014 in classes such as 35.

eBay claimed that the applied-for mark is highly similar to its own marks and consumers would confuse ZuMedia’s services with the “huge reputation” of eBay.

Last week, the IPO noted that some of the services covered by the marks are identical, whereas others are only similar. In relation to the latter services, the channels of trade are not likely to coincide and the services are not in competition, the IPO said.

Looking to the similarity between eBay’s word marks and the applied-for mark, the IPO said that there are “clearly visual differences” due to the presence of the circular device in the applied-for mark. However, the marks end in “bay”, which is a point of similarity.

The IPO found that the marks are visually and aurally similar to a medium degree, but there is an “immediately noticeable level of conceptual similarity between the respective marks when compared as wholes”.

Overall, there is no likelihood of confusion between the eBay word marks and the applied-for marks, the IPO said.

When comparing the applied-for mark with the figurative ‘bay’ mark, the IPO found there to be a fairly high degree of visual, aural, and conceptual similarity.

But, given the stylisation of the marks, and the circular pattern and the “UK” element in the applied-for mark, the IPO said that there is no real likelihood of direct confusion.

However, the office did find that there is a likelihood of indirect confusion, which may lead consumers to believe that the services offered by ZuMedia are related to those offered by eBay.

“The ‘UK’ element of the later mark simply indicates the likely focus of the business,” the IPO said.

Overall, the IPO found that eBay’s opposition succeeded in respect of advertising in class 35, but the applied-for mark will be registered in class 35 for other services, including business management, and class 38, for telecoms.

As ZuMedia had a greater proportion of success in the proceedings, the IPO ordered eBay to pay £560 ($721) towards its costs.