When Valucci Design tried to register LOADED as a UK trade mark for clothes they reckoned without LOADED magazine. But it was not plain sailing for IPC.
Topic: Brand extension
Who: IPC Magazines and Valucci Designs trading as Hugo Hog’s
When: September 2000
Where: UK Trade Marks Registry
What happened:
IPC, publishers of LOADED magazine, opposed an attempt by Valucci Designs to register LOADED in the UK for clothing excluding footwear. As IPC had registered LOADED in a completely different class (i.e. printed publications) some years before, they relied on an argument that the IPC brand had a "reputation" in the UK and that for Valucci to succeed would without due cause be detrimental to, or take unfair advantage of, the repute of the IPC LOADED brand. Because of the niceties of the rules, the relevant date for determining the position on these points was not the date of the hearing, but 20 March 1996, when Valucci filed their application.
First time round Valucci won the day, but IPC appealed. On whether the IPC "LOADED" brand had a reputation, the appeal finding was in the affirmative. By August 1995 the magazine was the UK’s best selling men’s magazine and the evidence showed it had a high degree of distinctiveness as a magazine brand among males between 20 and 35.
On whether Valucci’s registration of LOADED would cause detriment, the decision was not so clear cut.
At the end of the day, however, the "Appointed Person" (the official who hears appeals from Trade Mark officers’ decisions) was persuaded that there was "just enough" evidence of likely detriment to enable IPC to win the day.
The decisive evidence indicated that with its high reputation and well known fashion features, the magazine would be called to mind by a significant proportion of the public if they encountered clothing carrying a LOADED brand. What was more, this might well, the evidence showed, deter other clothing manufacturers from advertising in the pages of IPC’s magazine. This was the evidence of likely detriment IPC needed, and on this ground their appeal succeeded, thus stopping Valucci from registering LOADED for clothing.
Why this matters:
Where brands are the same but the products are different, evidence of distinctiveness, reputation and likely detriment (the same areas as are key in "passing off" cases in the UK) is crucial. Here the magazine publisher scraped home with "just enough" evidence, based on a position as at a date some four years previously. This is a reminder that for brand owners, keeping a dossier of data including every possible scrap of information about a brand, including examples of all advertising, expenditure, media used, as well as sales, recognition achieved, press mention etc could turn out to be critical in battles such as this one.
