SKE Loses "Crystal Bar" Trademark Case: UK Court Upholds First-to-File Principle

Key points:

·Plaintiff: Shenzhen Sikary Technology Co., Ltd., a Chinese e-cigarette brand, claims that "Crystal Bar" is its prior brand in the UK market and has raised objections and filed an appeal on a trademark dispute. 

·Defendant: Bargain Busting Ltd., a local company in the UK, submitted a trademark registration application for "Crystal Bar" in May 2022 (No. 3786148) as a distributor in the UK market and continued the registration process despite the objections raised. 

·Case details: Sikary attempted to block Bargain Busting from registering "Crystal Bar" through objections and appeals, asserting its prior rights based on established reputation in the UK before the application date. 

·Judgment: The High Court of England ruled that Sikary failed to provide sufficient evidence of having a protectable reputation in the UK and upheld the UKIPO's decision to reject the objections, resulting in a victory for Bargain Busting. 

·Legal background: The UK trademark law follows a "first-to-file" system, where the objecting party must prove actual reputation in the UK before the application date in order to prevent registration. 

【2Firsts news flash】According to a report by Law360 on July 1st, the High Court of England recently dismissed an appeal by the Chinese e-cigarette company Shenzhen Sikary Technology Co., Ltd., attempting to stop its competitor Bargain Busting Ltd. from registering the "Crystal Bar" trademark in the UK. The court found that Sikary failed to provide enough evidence to prove its protectable reputation for the "Crystal Bar" brand in the UK before its competitor submitted the application in May 2022.

The case revolves around UK trademark application number 3786148. As early as November 2023, the UK Intellectual Property Office (UKIPO) rejected Sikary's opposition application and supported Bargain Busting's registration application for "Crystal Bar." Sikary appealed to the High Court.

Deputy judge Michael Tappin KC stated in the ruling that Sikary's evidence was not sufficient to prove significant brand awareness or stable commercial use in the UK market, and that the original decision by the UKIPO was not lacking in rationality, quite the opposite. He also dismissed Sikary's claim that the UKIPO's inference was unreasonable.

According to the "first to apply" principle in the UK, in order to oppose someone else's trademark registration, the objector must establish a recognizable business reputation in the UK before the application date. This ruling means that Sikary has failed to prove they have prior rights to the brand.

It is worth noting that, despite the High Court banning Bargain Busting from pressuring retailers under the guise of trademark infringement in another case in May this year, citing that monetary compensation cannot compensate for potential commercial damages, this ruling is undoubtedly a key victory for Bargain Busting. The judge pointed out that Sikary's objection to this application was rejected, which also affects its objection process for seven other related trademarks.

Currently, both parties are engaged in multiple rounds of litigation in the UK High Court and UKIPO over the "Crystal" series of trademarks. The case number is CH-2024-000288.