In anticipation of re-launching 'UKTV G2' as 'Dave' in October 2007, UKTV submitted an application to register 'Dave' as a European Community trade mark in July 2007. Following almost three years of opposition proceedings raised by London branding consultancy company, also named 'Dave', the Office for Harmonization in the Internal Market published its findings on 24 January 2011. Decision: opposition successful.
The opposition argued that UKTV's application should not be permitted 'as is' on the basis that allowing UKTV to use 'Dave' (which the opposition had been using since 2003) in relation to advertising, broadcasting and distribution of TV programmes, would infringe the opposition's common law right to protect its brand from passing-off.
To establish passing-off, the opposition satisfied the so-called 'trinity test' i.e. that: (i) they had generated goodwill in their own earlier 'Dave' brand; (ii) UKTV's use of 'Dave' would cause confusion in the minds of the public between the two businesses; and (iii) that it is likely they would suffer loss as a result of such use. Although the opposition is not a broadcaster, many of its clients are in the media and it was felt that UKTV's use of 'Dave' could cause the opposition's current or prospective clients to be confused between the two brands; thus potentially causing financial loss to the opposition.
Given the increased viewing figures of the 'Dave' Channel following the rebranding exercise, it is easy to understand why UKTV lodged an appeal on 21 March 2011 to the decision of the Opposition Hearing. We shall wait to hear the outcome of the appeal, however if UKTV lose the appeal the channel may have to change their name. Having only re-branded the channel four years ago, this decision could be highly detrimental to UKTV. Aside from the rebranding costs, this may have an effect on income generated by sponsorship as sponsors pay to be associated with the popular 'Dave' brand – parties tend not to be as willing to pay as much to be associated with an unknown brand. The opposition may also have grounds to pursue UKTV for passing-off and if successful, UKTV could be liable for damages.
From a general point of view, the case highlights the often contentious nature of intellectual property law. Prior to developing any new brand, particularly on the scale of the 'Dave' channel, undertaking thorough due diligence as to whether any third party is currently using the mark, is invaluable.
© Thorntons Law LLP
12 April 2011
Loretta Maxfield