Reputations don’t lie – Shakira vs Shakara

Trade marks with a reputation often secure more extensive protection than those without. Recently, a number of well-known people, including the footballer Messi (see previous article When trade marks get Messi | Foot Anstey), have sought to take advantage of this by preventing third parties from registering a trade mark identical or similar to the famous person's brand.

Next up is Shakira, the Colombian singer best known for her hit single 'Hips Don't Lie', who tested this argument in a recent decision at the UK Intellectual Property Office. In this case, Shakira was found not to have a sufficient reputation for clothing and other goods and it was held that the relevant public would not link a third party brand, SHAKARA, to her brand.

However, Shakira did win on another ground namely, that the two marks were confusingly similar for certain goods.  

Background

Shakira applied to invalidate Steve Uzoma Nwankpa's UK trade mark registration for the mark SHAKARA covering classes 18 (bags etc) and 25 (clothing, footwear and headgear) on the basis of her earlier UK trade mark registration for SHAKIRA.  

This was based on:

1. Section 5(2)(b) of the Trade Marks Act 1994 (the "TMA 1994") – that SHAKARA was confusingly similar to SHAKIRA, which covered clothing and headgear (class 25).
2. Section 5(3) of the TMA 1994 – that SHAKARA would take unfair advantage of or be detrimental to the distinctive character or reputation of the SHAKIRA mark in relation to clothing and headgear (class 25) and entertainment services (class 41).
3. Section 5(4)(a) of the TMA 1994 – that SHAKARA would be a misrepresentation to the public that would damage the goodwill Shakira's brandhas built in relation to various goods and services including clothing, CDs, entertainment services since January 2000 and use of SHAKARA would cause damage to the goodwill in her business.

Section 5(2)(b)

The Hearing Officer considered that the marks were visually and aurally similar and that the goods ranged from identical (for instance, clothing) to low/low-medium similarity (for instance, bags) or were dissimilar. The purchasing process was largely visual.

As part of the conceptual comparison between the marks, the Hearing Officer considered Shakira's level of fame. Although the evidence filed showed that Shakira had enjoyed a good deal of chart success and her world tours included UK concerts, the Hearing Officer was not persuaded that Shakira had an exceptional level of fame recognisable by the relevant public, comparable to that of Lionel Messi in the earlier case. They considered that the mark SHAKIRA would not immediately strike the average consumer of clothing (the goods which formed part of this action) as the name of a particular musical artist. Rather, they would see the mark as a female name, albeit not a common one, or an invented word. Considering this, no conceptual comparison between the marks could be made.

Shakira also submitted that the distinctiveness of her mark in relation to clothing had been enhanced through use of her mark in the UK, for goods sold at concerts and through her website. As only limited evidence of sales was filed, the Hearing Officer found that no enhanced distinctiveness through use had been shown.

Despite the above, as the marks only differ by a single letter in the middle of the word, the marks were held to be directly confusing. The invalidation therefore succeeded in relation to all class 25 goods and bags, bags made of imitation leather, bags made of leather and boston bags in class 18.  

Section 5(3)

Since the invalidity action succeeded under section 5(2)(b) in relation to some goods, the Hearing Officer focused on Mr Nwankpa's remaining class 18 goods as part of this analysis.

When considering Shakira's reputation in her earlier mark, the Hearing Officer referred to the lack of enhanced distinctive character in relation to clothing and also held there was insufficient evidence of reputation in relation to clothing and headgear. After analysing the evidence (including the sales, downloads and streaming data of music recordings and her live performances and awards), reputation was found in relation to live performances but not for music publishing..

Notwithstanding that Shakira's mark had a relatively strong reputation and was highly distinctive for live performances, the Hearing Officer thought the reputation was not substantial enough to  bridge the difference between live performance services and Mr Nwankpa's remaining class 18 goods. Ultimately, as the Hearing Officer considered the relevant public would not mentally link Mr Nwankpa's mark with the earlier mark, the ground failed.

Section 5(4)(a)

As with section 5(3), the Hearing Officer also focused on Mr Nwankpa's remaining class 18 goods under this ground.

The Hearing Officer considered Shakira's evidence and accepted she had reasonably strong goodwill in relation to some of the pleaded services – such as various music performances and recording, however, not enough goodwill was demonstrated in other areas (such as providing websites and social media platforms). Out of the protectable goodwill, the Hearing Officer considered it was not so strong that that Mr Nwankpa's customers would consider that the class 18 goods were connected to Shakira's services. There was not enough of a connection for there to be misrepresentation; therefore, as there could not be damage to Shakira's mark, this ground failed.

So, overall, the invalidation action succeeded for clothing, footwear and headgear and some bags in class 18. However, the SHAKARA mark remained registered for the remaining class 18 goods, including various other bags (such as animal carriers, belt bags, brief bags, bags for clothes, baby backpacks) and, for instance, animal apparel, baby carriers and a variety of boxes.

This case demonstrates the high bar to claiming a level of reputation in relation to trade mark proceedings and reputation should be considered in relation to each good and service relied upon. In addition, as is seen so often, the evidence filed was not considered sufficient enough in backing up the arguments being made in relation to enhanced distinctiveness.

Charlene Nelson, Senior Associate (Chartered Trade Mark Attorney)