Sainsbury looses battle to Sain Ltd. in a Trademark Dispute

On 27 January 2018, Sain Ltd. applied to register, a very long list of clothing, footwear and headgear goods in the series of two figurative marks featuring the text “SAIN_ and SAIN”. The application was made for goods related to Class 25. On 15 June 2018, Sainsbury PLC filed a Form TM7 notice of opposition.  The matter was filed before the UKIPO.

The opposition was made under Section 5(2), 5(3), 5(4) (a) of the Trademarks Act 1994. In the absence of evidence, the grounds of opposition under Section 5(3) and 5(4) were rejected by the Office. Section 5(2) says that a trademark shall not be registered if it is similar to an earlier trademark and also can’t be registered for goods or services identical with or similar to those for which the earlier trademark is protected. If there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark then it is not capable of getting registered.

Sainsbury is the second-largest supermarket in the United Kingdom. Relying upon the trademark “Sainsbury’s” of the opponent, the mark of the applicant was opposed. As the opponent’s mark was registered on October 2016, so the opponent claimed that their mark is an earlier mark. Sainsbury complained that the applicant’s mark is similar to the earlier mark and it badly affected their reputation and goodwill.

The first opposition was made on the ground of goods. They complained that the applicant’s goods and their category of goods are all the same. Both the companies are doing business under class 25.

In regard to the argument, the Court said that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

The Court emphasized distinctive and dominant components of the mark. The opponent claimed that that the marks of Sain Ltd are visually, aurally and conceptually similar to their marks. The Court found that the applicant’s mark is a short single syllable sound and the earlier mark is clearly a longer word and its second half will not be lost in the utterance. So the similarity is of low degree.

The Court observed that the applicant’s mark is a homophone of the common English word "SANE”, which is legible to the average consumer as a 'Sound mind'. The opponent didn’t file any direct evidence.

The opponent complained that there is a likelihood of confusion between the marks. As to indirect confusion, it was submitted on behalf of the Opponent that there is a possibility that the average consumer may see the name SAIN used on clothing and believe a commercial connection between that item and that of Opponent.

The Court disagreed to the staid points. The Court dictated that all allegations of the opponent were rejected. Therefore, it was held that the marks of the applicant are capable of getting registered.

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