IP Case Law library

In Re TMA No. 79424 “BARCLAYS PRESTIGE BANKING”, EX PARTE HEARING.,6th February 2015

Facts

The Applicant, Barclays Bank PLC, brought an action against before the KIPI Trademark Registry concerning the registration of the trademarks “BARCLAYS PRESTIGE BANKING” and “PRESTIGE BANKING” under trademarks registration classes 9, 35, 36 and 41. While the registry approved only two, classes 9 and 41, they rejected the application on classes 35 and 36, noting that class 35 was similar to the PRESTIGE PLAN from the Standard Bank of South Africa and for class 36, due to the registered mark PRESTIGE from Bulgartabac Holding. The applicant argued that their marks were distinct and could not cause confusion, emphasising Barclay’s niche target market.

Issues

1. Whether the Applicants’ marks “BARCLAYS PRESTIGE BANKING” (WORDS) and “PRESTIGE BANKING” (WORDS) are so similar to the marks “PRESTIGE” (WORD) and “PRESTIGE PLAN” (WORDS) as to cause a likelihood of deception or confusion contrary to the provisions of sections 14 and 15(1) of the Trade Marks Act? 

Rule

Trade Marks Act (No. 51 of 1955)

Section 14 - provides that no person shall register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice or would be contrary to law or morality, or any scandalous design.

Section 15 - provides that no trade mark shall be registered in respect of any goods/services or description of goods/services that is identical with or resembles a mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods.

The decision recalled the precendent set out in the case of Eli Lily & Co V Natural Answers Inc 233, F. 3d 456, [USA], where the court held that in determining the similarity between trade marks, one ought to examine:

1. the similarity between the marks in appearance and suggestion; 
2. the similarity of the products; 
3. the area and manner of concurrent use of the products; 
4. the degree of care likely to be exercised by consumers; 
5. the strength of the complainant's mark;
6. any evidence of actual confusion and
7. the defendant's intent (or lack thereof) to palm off its product as that of another. 

Analysis

In arriving at its decisions, the registry centered on the potential for confusion due to the similarity of the marks and existing marks. On this, the name PRESTIGE cut across all the marks. However, given that the applicant was providing services to a high-income market (niche) there was no likelihood of confusion to be occasioned to the unsuspecting public.

Conclusion

The applicant was allowed to proceed with the registration of their marks under clauses 35 and 36 subject to their amendment of their application to include a disclaimer on the work BANKING to the mark. This piece agrees with this ruling given that different markets in which the marks would operate, as such, negating instances of possible confusion from consumers, save for those who may be targeting the same niche market as the Applicant.

Ruling available here.