Cathay Home Inc, a supplier of bedding and home goods, has withdrawn its US trade mark application for “Swift Home” following an opposition filled by Taylor Swift’s legal team.
Cathay Home is a manufacturer and distributor of bedding and homeware that is sold through major retailers. They recently applied for a logo trade mark which was made up of a stylised version of the words “Swift Home” to cover these goods and services in the US.
Taylor Swift’s legal team filed a notice of opposition against Cathay Home’s application, arguing that the cursive font used in the logo was highly similar to the registered trade mark Taylor Swift has for her signature. They claimed that the similarity would cause the public to mistakenly believe that any products sold with Cathay Home’s logo were endorsed or licenced by Taylor Swift. This is known as the ‘likelihood of confusion’ principle, which can also be raised in UK trade mark disputes.
Shortly after receiving the opposition, Cathay Home withdrew its application and its legal team publicly commented that the logo was not essential to the business. They also explained that they already had a coexistence agreement with Taylor Swift for a different “Swift Home” trade mark (which was not in dispute).
The notice of opposition filed by Taylor’s legal team is a good reminder that similarities between brands are not always obvious. Although Taylor Swift is mostly known for her success in the music industry, she has a large trade mark portfolio covering many other elements of her brand and so it would not be surprising for someone of her popularity to launch a bedding or homeware range.
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For many businesses, registering an unstylised or “word only” trade mark is preferrable because it gives wider protection than a stylised/logo trade mark. However, there can be various business reasons why an application may be made to register a stylised/logo mark.
In this case, if the dispute proceeded to a tribunal, the examiner would have paid close attention to the fact that the cursive font was the main feature of both logos. Although the only identical word in both trade marks was “Swift”, the visual similarity of the font seems to have been significant in that it may have increased the possibility that some likelihood of confusion would have been found.
It might have been more difficult for Taylor’s legal team to make the likelihood of confusion argument if Cathay Home had used a non-cursive font, the two marks would still have had the word “Swift” in common but there would not have been quite the same visual similarity. It is impossible to know whether this would have deterred Taylor’s legal team from filing an opposition entirely, but it would have put Cathay Home in a stronger position, especially as the parties already have a coexistence agreement to cover its use of the words alone.
Whenever a trade mark application is filed there is always a risk that a third party will file an opposition. However, undertaking a full search of the trade mark register at the outset can reduce this risk by helping to identify any existing registrations which could be used as the basis of opposition to the application.
As the Taylor Swift case highlights, trade marks do not need to be identical for an opposition to be raised. When conducting a search, it is important to consider also any visual or phonetic similarities between existing trade marks and the one that you intend to apply for. This allows you to assess the level of risk involved and reduces the likelihood of receiving an unexpected opposition from a third party. It also gives you the ability to address any concerns identified in the search before submitting an application (such as making changes to the trade mark design or overall branding, or making changes to the specification of the goods/services to be covered by your application).
If you have any questions as a result of this article or would like assistance with making a trade mark application, please contact [email protected].
