All bets are off: EUIPO Cancellation Division holds that Lottoland’s Powerball EUTM was filed in bad faith
7th August 2022
A High Court judge granted an injunction on Tuesday, 29th March preventing a Belfast taxi firm from infringing the trade mark rights of a competitor.
Two companies, fonaCAB and Value Cabs, had been providing their taxi services under the brands “fonaCAB” and “Value Cabs” for many years in Belfast. In January 2020, a competitor named Michael Hicks set up a taxi company under the name FonaValue and 7 Seater Taxi Ltd. He has operated a taxi service under the brand “FonaValue” since then.
Given “FonaValue” fuses the first words of the established “fonaCAB” and “Value Cabs” brands, there were concerns about confusion in the marketplace. When these concerns were voiced by fonaCAB and Value Cabs, a £2.5m payment was allegedly demanded by FonaValue. In response to this demand, the two companies sued FonaValue for trade mark infringement and passing off.
When granting the injunction, Mr Justice McAlinden commented:
"It is an utterly shameless and blatant attempt to extort money. Bearing in mind what I regard as the most reprehensible conduct of the second-named defendant (Mr Hicks), I have no hesitation in making an order in the terms sought. A clear message has to be sent out: if people try these stunts they will backfire on them badly.”
This decision is useful in that it serves as a stark warning to opportunistic companies who try to take a shortcut and piggyback off the good name, renown and success of an established competitor. Although a company may believe such shortcuts are a clever and enterprising way of doing business, in reality they cause more problems than they are worth as the defendant is often forced to re-brand and is left to face a hefty litigation bill.
Trade mark attorney Adam Flynn addresses a recent decision by the EUIPO's Cancellation Division regarding Lottoland… https://t.co/jPtYfRZZ8J
We have been ranked as a Top Tier Firm 2022 - Ireland in the categories Trade Mark Prosecution – Patent and Trade M… https://t.co/BsMd3yikMN
Happy Pride from all of us at FRKelly! This year we celebrated by donating to two amazing LGBTQIA+ charities that d… https://t.co/R7YjbSpf8s