TM fizzles out after PepsiCo secures invalidation
A trademark registration used for a “look-alike” Pepsi product has fizzled out after PepsiCo won a case at the UK Intellectual Property Office (IPO).
The IPO delivered its decision on Wednesday, February 28, after soft drinks manufacturer Pepsi applied for the invalidation and cancellation of Teng Yun International’s UK trademark number 3,175,612. Registered in October 2016, it covered class 32 for soft and non-alcoholic drinks.
It features a blue, red, and white swirl pattern inside a circle, which itself is inside a blue square. A white silhouette of a surfer is depicted in the swirl.
Pepsi is the owner of UK mark 2,499,537 and EU mark 11,727,856, covering soft and non-alcoholic drinks. Both feature a swirl pattern inside a circle in colours blue, red, and white.
Pepsi claimed its earlier marks are “highly distinctive as a result of the extensive use made of the marks in the UK”. Use of the contested mark would “take unfair advantage” of its marks’ reputation, Pepsi added.
Its marks have been used in the UK since 2009 but the ‘Pepsi Globe’, as its logo is known, has been used in branding since 1991. It said its recognisable ‘Pepsi Globe’ mark was ranked as the 29th most valuable brand in the world in 2016 by Forbes.
Teng Yun has “decided to adopt a look-alike product in order to unfairly compete”, according to Pepsi.
Although both marks contain a circulate device as a central element, divided into irregular coloured sections, the IPO found a low degree of visual similarity between them.
The colour combinations and distributions are similar but the surfer figure “conveys a concept that is absent” from Pepsi’s marks. There is a mild conceptual difference between the marks, according to the IPO.
However, it added that Pepsi’s mark on a blue background introduces an “additional point of similarity” and is “recognised as part of the branding” of Pepsi.
Ultimately the issue of unfair advantage is “at the heart” of the matter, according to the IPO. As the selection process is likely to involve selecting the drinks from shelves or cabinets, the “visual similarities and differences between the marks” are important.
The IPO noted that soft drinks are not “an expensive or highly considered purchase” and consumers therefore pay a below average degree of attention when choosing these products.
Lacking a likelihood of confusion “does not mean that the public will not make a mental link between the marks”, the IPO said. “The contested mark will call the earlier marks to mind” for a “significant section of the public”, it added.
Pepsi has 5% of the UK market for carbonated soft drinks and a “strong reputation”. The “free-ride” Teng Yun would receive, in the form of a marketing advantage, is a “non-hypothetical risk” given the “immediate familiarity of the look-alike product”.
Based on this finding of an unfair advantage, the IPO granted the application for invalidation. It ordered Teng Yun to pay Pepsi £2,250 ($3,118) as a contribution towards Pepsi’s costs.
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