SEGWAY keeps SECVAY off the trademark register

There was a time when Segway scooters suddenly seemed to be everywhere.

At airports, on city tours and around business parks, people could be seen gliding past strikingly erect and exceptionally smoothly.

For a well-known consumer brand of this kind, a strong trademark portfolio is a valuable asset. When a Chinese company applied to register the mark SECVAY in the European Union, the owner of the SEGWAY trademark therefore took action.

The SECVAY application covered a broad range of products, including consumer electronics such as smartphones, headphones, batteries, chargers, computers and camera accessories, as well as clothing, footwear and headgear. Segway already held earlier trademark rights for a substantial proportion of those goods, resulting in considerable overlap.

The action was successful. The European Union Intellectual Property Office (EUIPO) found SEGWAY and SECVAY to be visually similar to an average degree and phonetically similar to an even greater degree. Both marks consist of six letters, have strongly similar sound an differ mainly in their middle letters. That was insufficient to rule out of confusion. Consumers also rarely compare marks side by side, but instead rely on the imperfect image retained in their memory.

This opposition shows how powerful a trademark registration can be where a new name comes phonetically close to a well-known consumer brand. The opposition succeeded not only for identical goods, but also for goods that were similar only to a limited agree. A brand owner with a strong trademark portfolio who acts in good time can therefore prevent a similarly sounding name from entering the market.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.