BT’s glitzy launch of its new O2 telecoms brand lost some of its publicity oxygen when there were cries of “foul” by another “O2″ brand owner. For the story and details of other O2 brand fans click here
Who BT and Burford Group plc
Where UK
When Early September 2001
What happened
BT's recent, much hyped re-branding of its mobile phone business "O2" took a knock within days after launch. A property company, Burford Group plc, threatened legal action. In 1999 Burford had launched a shopping centre in the Finchley Road under the O2 name. They said that at the time of the BT launch they were considering rolling out the brand name to other Burford shopping centres across the country and in other parts of Europe. The UK trade mark register certainly records their interest in the O2 brand. As long ago as April 1998 they filed an application to register a logo incorporating " O2" for no less than 7 different categories of goods and services. These included retail services, advertising services, real estate, garage rental and catering services. All these proceeded to registration. This was followed up in October 2000 by the filing of further applications for exactly the same variety of goods and services, in respect of a slightly different version of the O2 brand. This consisted of a stylised representation of "O2." That application has not yet proceeded to registration and, perhaps crucially, none of the goods and services covered by the 1998 and 2000 filings include telecommunications services. BT did not apparently start taking steps to register its own O2 brand until early 2001, and predictably one of the classes for which they sought registration was "telecommunications services" in class 38. The versions of the O2 brand of which they sought registration also included a version in plain typeface as well as stylised alternative representations. None of the BT applications have as yet achieved registration.
Why this matters
Since the initial reports of Burford's complaint, there has been no indication as to whether it has been pursued, for instance by the issue of proceedings. As things stand, if Burford do wish to pursue their claims, they can choose passing off and/or trade mark infringement.
To be in with a shout on "passing off", they will have to be able to argue that their use of the O2 brand in the UK since 1999 has been so extensive that the brand itself has become distinctive of the services provided by Burford. On the face of it they may have a chance on this, particularly since reports indicate that the Finchley Road " O2" shopping centre has an annual shopper throughput of 7.5m. They will also have to persuade the court, however, that because of this distinctiveness, the marketplace will be confused into believing that the BT product is in some way linked to Burford or its services. In addition to this, they will have to show that as a result of this confusion Burford will sustain financial damage.
On trade mark infringement, even though Burford do not currently have a registration of the O2 brand in respect of telecommunications services, they will have two bites at the cherry. First, they could argue that the services for which BT is using the brand are "similar" to the range of products for which Burford has an O2 registration and that, as a result of this, there is a likelihood of confusion. Secondly they could admit that there is no "similarity" between Burford's and BT's products, but assert that their O2 brand has a reputation in the UK and that BT's use of a similar brand will without due cause take unfair advantage or be detrimental to the Burford O2.
At first blush, all these claim types look at best an uphill battle for Burford, but time will tell.
BT must have been aware of the Burford trade mark registrations and of Burford's active use of the brand before they decided to plump for O2. Clearly they were advised that Burford would have a difficult time establishing a likelihood of damaging confusion because of the quite different areas in which the two companies were operating.
Nevertheless, Burford's claims were not exactly helpful to the O2 launch, and some might say that BT might have more prudently discussed their plans with Burford before deciding to opt for the O2 brand.
On the other hand, BT and Burford are not alone in finding the chemical symbol for oxygen attractive as a brand.
Since 1994 no less than 11 different commercial concerns have filed applications to register the " O2" brand. These include an ominous application in 5 classes, including class 38 in the name of O2 Holdings LLC of New York. This has reached the stage of having been "advertised." This means that the application has been published in the Trade Marks Journal and unless any objection is filed within three months the marks will be registered. One imagines BT for one may have lodged an objection, but in any event this confirms that it is proving increasingly challenging for those seeking new brands to find any dictionary word or accepted symbol which has not already caught the eye of another business. No wonder we are seeing, for better of for worse, so many more coined brand names, such as "Corus" (British Steel), "Consignia" (the Post Office) and "Accenture" (Arthur Andersen) being adopted by large organisations looking for a trouble-free new brand launch.
