Bolt succeed in invalidity action against Beebolt 

About the authors: 

Chris Hoole is a partner, dual-qualified solicitor and trade mark attorney, experienced in contentious and non-contentious intellectual property (IP) matters, including trade marks, designs, copyright and patents.

Cherry Shin is a trade mark attorney involved in diverse aspects of trade mark prosecution, design registration and contentious matters. Her particular interest lies in contentious trade mark opposition proceedings.

Based on the grounds of likelihood of confusion, and reputation of an existing mark, the UK IPO has issued a decision confirming victory for the Estonian on-demand transportation platform, Bolt.  

 

Background 

Bolt Technology OÜ (Bolt) is a mobility company that offers ride-hailing and other transport services, including bike hire, in the UK. It owns several trade marks featuring stylised and non-stylised variations of the word ‘BOLT’ (see marks below).   

Based on these earlier rights, Bolt filed invalidity proceedings against Rehaan Group FZ INC’s (Rehaan Group) later UK trade mark registration for Beebolt (mark can be seen below), registered for goods and services concerning transport and software, on the grounds that if the latter registration remained on the register there would be: 

i). A likelihood of consumer confusion (section 5(2)(b) of the UK Trade Marks Act 1994)

ii). Damage to the repute and distinctive character of its earlier marks (section 5(3) of the UK Trade Marks Act 1994)

iii). A risk of passing off (section 5(4)(a) of the UK Trade Marks Act 1994)

 

The marks at issue (click to expand) 

 

Section 5(2)(b) – likelihood of confusion

The Registrar found that the marks at issue contained enough visual and aural differences to avoid a likelihood of direct confusion. Its analysis of indirect confusion however, found that the common element ‘BOLT’ was enough to confuse consumers in to thinking the Rehaan Group’s mark was a sub-brand or commercial extension of Bolt’s earlier marks. This was supported by the fact that Bolt had established an enhanced level of distinctive character under its Bolt mark, through its extensive use in the UK since June 2019 until June 2020 (the time of Beebolt’s filing).

Section 5(3) – reputation

The Registrar considered whether Bolt’s earlier marks enjoyed a reputation at the time of Beebolt’s filing (June 2020).  

Bolt had started trading in the UK from June 2019. The Registrar found that evidence dated from June 2019 to June 2020 was enough to demonstrate an existing reputation at the time of Beebolt’s filing, in relation to mobile applications for booking taxis, taxi transport and travel reservation and information services related to carriage of passengers. 

 

The UKIPO held in favour of Bolt, finding the registration invalid. 

 

Read the full decision here: Trade Mark Inter Partes Decision O/552/22 (ipo.gov.uk)

Authors

Related posts

T 1688/20: the “Gold Standard” test of novelty

In T 1688/20, the Board of Appeal has deviated from novelty criteria with respect to selection inventions as set out in the EPO guidelines for examination (G-VI, 8, ii), in favour of applying the “Gold Standard” test of novelty. This decision may be useful when arguing novelty in examination and opposition proceedings.

Read More »