Whose On-Line Is It Anyway?

A recent appeal from the UK Trade Marks Registry to the High Court has emphasised the need for trade mark owners to file evidence correctly, particularly when seeking to establish a reputation in a mark.¹

E! Entertainment Television Inc applied to register the mark E! ONLINE in relation to a broad range of goods and services in the field of telecommunications. Deutsche Telekom opposed the application relying on its earlier UK marks and CTMs in respect of T-ONLINE in the same field.

The Court held that the Hearing Officer had not erred in applying the well established law of the European Court of Justice regarding the comparison of trade marks for the purposes of assessing similarity². The Hearing Officer had found the only stylised element of the T-ONLINE marks to be five small squares bisecting the mark, which he regarded as making very little difference to its overall distinctive character. He also held that there was nothing to suggest that the ‘T’ element of the mark was