In recent years Mewburn Ellis has successfully helped TASER International, Inc prevent the registration of the mark TAZER by a third party at the European Union Intellectual Property Office (EUIPO).
TASER International has a significant global reputation. It is best known for its TASER branded stun guns, also known as “electronic control devices” used worldwide in law enforcement, military, correctional, professional security, and personal protection markets.
A Spanish company applied to EUIPO to register the mark TAZER for software and a range of services, including those related to social networks. TASER International were understandably concerned that this was an attempt to take advantage of the reputed TASER mark and could cause confusion on the marketplace.
Sofia Arenal, a Mewburn Ellis partner with extensive experience of trade mark oppositions and other contentious proceedings, guided TASER International through the collation and preparation of a substantial amount of evidence to use in a witness statement for the opposition against the registration of the TAZER mark, and put together convincing arguments to support the client’s case.
On 28 May 2014 the EUIPO Opposition Division decided the case in favour of TASER International on the basis that the extensive evidence had shown the TASER mark has a reputation throughout the European Community. Registration of the third party TAZER mark was totally refused.
It is very rare for the EUIPO to decide an opposition on the complex grounds that an earlier mark (TASER in this case) has a reputation and that the reputation or distinctive character will suffer from use of the junior mark (TAZER in this case), or that the junior mark takes advantage of the earlier mark, for example by free-riding on the reputation.
Despite that, Sofia Arenal confidently asserted this ground of opposition, in addition to the more straightforward but arguably less strong approach, of arguing that the marks and good/services were confusingly similar.
Her efforts allowed the examiner to conclude, “the evidence as a whole clearly demonstrates that the brand is reputed and indeed any negative connotations are balanced by the positive assertions.”
The Opposition Division was unusually forthcoming in its praise. “All of the assertions contained in the witness statement are backed up by independent and impartial sources of evidence… The arguments of the opponent are extremely well developed and are completely plausible.”