Trek Bicycle Corporation successfully fends off TINY TREKS

TINY TREKS sounds charming and adventurous. Fittingly, the mark was applied for in relation to products including pushchairs, trolleys, camping trailers, and wheelchairs.

Trek Bicycle Corporation, an American bicycle manufacturer active since the 1970s, sells its bicycles worldwide under the TREK trademark. It was less enthusiastic about the new European TINY TREKS mark and filed an opposition based on the reputation of its earlier mark.

That reputation had to be established. According to the European Union Intellectual Property Office (EUIPO), Trek succeeded in doing so.

The EUIPO then compared the signs and found a certain degree of similarity. The earlier mark TREK is reproduced in its entirety in TINY TREKS, creating both visual and phonetic similarities between the marks.

The nature of the goods also played an important role. Bicycles, pushchairs, wheelchairs and trolleys all fall within the broader field of mobility and transport. They share certain characteristics, may appeal to the same consumers and can sometimes be offered through similar sales channels.

According to the EUIPO, this was sufficient for the relevant public to establish a link between the marks. Where an earlier mark enjoys a reputation, even a limited degree of similarity may be enough to bring that mark to mind.

Finally, the EUIPO had to determine whether TINY TREKS might benefit from the reputation and positive image of the earlier trademark. It concluded that there was a risk of TINY TREKS taking unfair advantage of the TREK mark. The application was therefore refused.

The case shows that a trademark availability search could not be limited to directly competing marks. Trademark owners would also be wise to monitor similar marks in neighbouring markets, particularly where their own mark enjoys a certain degree of reputation.

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.