SKE attempted to prevent UK company Bargain Busting from registering the “Crystal Bar” trademark, claiming that it had prior goodwill in the UK. The UK High Court recently ruled that SKE had insufficient evidence and upheld the IPO’s decision to reject the opposition.
Key points:
- Plaintiff: Shenzhen Skoll Technology Co. The Chinese vape brand Skoll claimed that “Crystal Bar” is its prior brand in the UK market, filed an opposition and appealed the trademark dispute.
- Defendant: Bargain Busting Ltd. A local company in the U.K. The application for registration of the trademark “Crystal Bar” (No. 3786148) was filed in May 2022 for the U.K. market, and the registration process was advanced even after the opposition was filed.
- The case: Skoll sought to prevent Bargain Busting from registering “Crystal Bar” through opposition and appeal, claiming prior use rights as it had established goodwill in the UK before the date of the application.
- Result: The UK High Court ruled that Skoll had failed to provide sufficient evidence of protectable goodwill in the UK and upheld the UKIPO’s decision to dismiss the opposition in favor of Bargain Busting.
- Legal background: UK trademark law adopts a “first-to-file” system, whereby the opposing party must prove that it had actual goodwill in the UK before the date of filing, or else it cannot be prevented from registering.
SKE Loses “Crystal Bar” Trademark Case
According to Law360 on July 1, the UK High Court recently issued a judgment formally rejecting an appeal by Chinese vape company Shenzhen SKE Technology Co. Ltd. seeking to prevent rival Bargain Busting Ltd. from registering the “Crystal Ltd.’s attempt to prevent its rival Bargain Busting Ltd. from registering the “Crystal Bar” trademark in the United Kingdom. The Court found that SKE had failed to provide sufficient evidence that it had protected goodwill in the UK under the “Crystal Bar” brand before the filing of the rival’s application (May 2022).
The case centered around UK trademark application number 3786148. Back in November 2023, the UK Intellectual Property Office (UKIPO) rejected Skoll’s opposition and upheld Bargain Busting’s application to register ‘Crystal Bar’. Skoll appealed to the High Court.
English Courts Recognize First-to-Apply Priority Principle
Acting Judge Michael Tappin KC said in his judgment that Skoll’s evidence was insufficient to demonstrate significant brand awareness or consistent commercial use in the UK market, and that the UKIPO’s original decision was “not irrational, quite the contrary”. He also rejected Skoll’s claim that “UKIPO’s reasoning was unreasonable”.
Under the UK’s “first-to-file” principle, to oppose the registration of a trademark, the objecting party must have established identifiable goodwill in the UK before the date of filing. The ruling means that Skoll has failed to prove that it has prior rights to the brand.
It is worth noting that this judgment is a key victory for Bargain Busting, even though the High Court in a separate case in May this year had barred Bargain Busting from pressuring retailers for trademark infringement because monetary damages would not make up for the potential commercial detriment. The judge noted that the rejection of Skoll’s opposition to the current application had collaterally affected the course of its opposition to seven other related marks.
The parties continue to litigate the “Crystal” series of marks in the UK High Court and UKIPO. Case No. CH-2024-000288.
