BLOOM & CO opposition: confusion, non-use and settlement
Bloom & Co Ltd filed UK application no. 3456789 on 3 March 2024 for BLOOM & CO in Class 30 for 'tea; herbal tea; tea-based beverages'. It has used the mark on tea bags since January 2024. Bloom Coffee Roasters Ltd owns UK registration no. 1234567 for BLOOM in Class 30 for 'coffee; coffee-based beverages', registered 2008, and has used BLOOM on coffee in the UK continuously. It files opposition on 20 June 2024 under s.5(2)(b), relying on its registration and also passing off. Bloom & Co counterclaims that the earlier mark should be revoked for non-use because Bloom Coffee Roasters' website shows only coffee, not tea. Bloom Coffee Roasters has evidence of £2m annual coffee sales, 40 retail customers and social media. The opposition evidence rounds are approaching. Bloom & Co's director proposes to settle by restricting its goods to 'herbal tea' and to use 'BLOOM & CO' only with a house mark.
1. Assess the likelihood of confusion between BLOOM and BLOOM & CO for tea versus coffee.
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Goods: tea and coffee are not identical, but they are similar: same nature as hot beverages, same purpose, relevant public and distribution channels (supermarkets, cafés), and they are complementary. Marks: BLOOM is the dominant and distinctive element in both; '& CO' is weak. The marks are highly similar. Under s.5(2)(b), the identity or similarity of the dominant element plus similar goods creates a likelihood of confusion, even though tea and coffee differ. Passing off: Bloom Coffee has goodwill in BLOOM for coffee; Bloom & Co's use of BLOOM & CO for tea may misrepresent a connection and cause damage. The fact that Bloom & Co uses a house mark does not necessarily avoid confusion. Overall, the opposition has a strong chance of success.
2. Advise on proof of use and the scope of the earlier registration, including the non-use counterclaim.
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Because the earlier mark was registered in 2008, Bloom & Co can require proof of genuine use in the five years ending 3 March 2024. Bloom Coffee's evidence of £2m annual coffee sales, 40 retail customers and social media is likely sufficient for coffee and coffee-based beverages. The counterclaim for non-use fails because the earlier registration covers coffee, not tea, and Bloom Coffee has used it for coffee. Bloom & Co's point that there is no tea use is irrelevant: a proprietor need not use the mark on every good in the specification; it must prove use for the goods relied on. If the earlier specification had included tea, proof of use for tea would be needed, and the opposition could be limited. Here the scope is coffee, so the attack is misdirected.
3. Evaluate the proposed settlement and what terms should be included.
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Restricting to 'herbal tea' does not eliminate the risk: herbal tea is still a hot beverage sold through the same channels, and BLOOM remains the dominant element. Use with a house mark may reduce but not cure confusion; the purchaser may still see BLOOM & CO as the origin. A coexistence agreement should define permitted goods narrowly (for example herbal tea only, excluding coffee and tea), require a distinguishing house mark displayed with equal prominence, prohibit confusingly similar marks, set geographic and channel limits, require withdrawal of the opposition, provide for costs, and state no admission of validity or infringement. The UK IPO is not bound by the agreement but will consider it. Bloom & Co should also consider a rebrand if it wants to expand into tea or coffee; the agreement may be only a temporary fix.