Mon 1st Mar 2021
Insurance briefing - is a competitor’s branding or services too close for comfort?
Sectors: Finance and insurance
Insurance is a mature and highly competitive sector, with over 400 operators in the UK and thousands of products. Without a tangible visible product for consumers to see, differences in service offerings can be subtle and hard for consumers to distinguish between.
Consequently, the branding of the company and its various service-lines are critically important if you are seeking to carve out a particular segment of the insurance market.
‘It can be a challenge to develop a distinctive brand,’ says Chartered Trade Mark Attorney James Cornish. ‘And when you have done so, it is important to protect that brand – especially if you see another company launch something which is very similar. However, there are degrees of similarity, and disputes can often arise about whether, or not, another insurance brand is too close for comfort.’
To object to another brand, an insurer’s services should be similar. To oppose another trade mark application, or sue for infringement, insurers need to be able to show the services in their trade mark registrations are similar, or that they have a strong reputation giving them rights to object to use in different market sectors. But what constitutes similar services?
How is similarity assessed in the event of a dispute?
When similarity of services is assessed, it may be carried out in the abstract, without noting how exactly the owner of the new brand will use, or develop their brand. A list of goods in a trademark application will be assessed at face value by the Intellectual Property Office in an opposition between brands.
What services are considered ‘similar’ to insurance services?
The general principles are that insurance services are considered similar services to financial services, (but different from business management services, printed matter, or software).
This is because financial services bodies sometimes provide insurance, and the services are similar in nature and in the trade channels.
Insurance may be deemed similar services to real estate services. Financial institutions provide a wide range of services, including insurance, funds, money, and assistance with real estate, so the services may be complementary and be provided by the same business. Carole Nash Insurance successfully objected to another CN logo for such services B1306341 CN logo.
In some decisions, insurance services have been considered identical to financial services. Cathay United Bank Co’s application was unsuccessful because the term financial services is considered so wide in law, it covered their insurance services. CATEY R171/2019-4.
Insurance services may be deemed similar to developing and providing financial services technology, where it includes financial services technologies tailored to the insurance sector, so FISERV INC could assert passing off rights against FISERV used for insurance services R1638/2018–5.
What services are not ‘similar’ to insurance services?
Although software is an integral part of financial and insurance services, it is not deemed similar to insurance services, as it has a different nature, channel of distribution, method of use and/or purpose.
Even though leasing agreements may involve lessees insuring leased property, leasing services are considered different services in law from insurance. The nature, purpose and method of use differ. Alpha Leasing failed to stop BMW registering their brand Alphabet Private Lease for insurance services R782/2018–4.
Insurance services are dissimilar to advertising services, due to the fundamental differences, even though adverts may feature insurance services. Business administration services, and office functions that involve managing businesses and keeping records also differ in nature and purpose from insurance services. Two companies wanted ownership of the brand COMPENSA and the services were sufficiently different for them to coexist. B1209438.
Once you have established that the services in question are similar, then the Intellectual Property Office will look at the particulars of the trade marks in question. In our separate briefing we will examine a number of examples from within the insurance sector to highlight the key issues.
For more information on our expertise in the insurance sector or advice on brand protection and trade marks in the UK, Europe and internationally, please contact James Cornish on 44 (0) 207 831 7929 or email firstname.lastname@example.org.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in February 2021