Has SEAT started making face masks?

You could have been forgiven for thinking for a moment that car maker SEAT had started making face masks, but nothing could be further from the truth. This confusion arose when a South Korean company filed a similar-looking logo in the European Union for the sale of face masks.

Fortunately for SEAT, its trademark has been registered for many classes and is not yet subject to the requirements of use, which made it fairly easy to thwart the application. Of course, SEAT could not be 100% sure that their assertion that the trademarks resembled each other too closely would prevail, especially as there were some differences between the logos. The European Trademarks Office also thought so, but still found that the overall impression was of more similarities than differences, and decided that the opposition was justified.

But will it still be as easy for SEAT to win a case like this when its trademarks become subject to an obligation to use? Unfortunately for SEAT, the answer to this question is probably no: in future, they will have to prove that their trademark has actually been used for certain named products (including cosmetics, jewellery and bags). If this were to fail, however, SEAT could still invoke its trademark’s reputation, a claim which would offer cross-product protection. However, in order for an objection based on this argument to win, there would need to have been either a dilution of SEAT's trademark rights or a risk that the applicant would profit from SEAT's reputation. This is generally a lot harder to prove.

Of course, SEAT could file a new trademark application to win respite for another five years, but re-filing a trademark solely for this purpose is nowadays considered to constitute acting in bad faith, so that option is also ruled out.

The lesson here is that, when it comes to a new logo, it is a good idea to consider a design registration, as this entails neither an obligation to use nor a classification of products and services.