IPO Facto – Dilution or Passing Off?


We were somewhat surprised and bemused to learn on the IPKAT, that Dr Nicola Searle has resigned from her KAT blogging and is launching a blog called IPO FACTO under the auspices of the UK Intellectual Property Office.

Apparently, Ipso Facto was already taken. Not being formally qualified in UK trademark law, I can’t opine on whether IPO FACTO would be considered confusingly similar to IP Factor under UK unregistered trademark laws.

Lets look at this under Israel trademark standards by applying the five pronged triple test:

1. Sight and Sound

Well IPO FACTO and IP FACTOR look similar don’t they? The extra O on IP is compensated by the (c) in my logo.

IP standards for Intellectual Property the O stands for Office. The UKPTO calls itself the IPO in a similar manner to the Israel Patent Office calling itself The Patent Agency. Less significant organisations like the USPTO, JPO and SNPO use the national name. The UK doesn’t. Its like having stamps without the country name. Its a general trend of the British to ignore international reality and to remember the days of the Empire.

Is IPO pronounced I Pee, Oh! or, I Peeyo or I Po?

I think IPO and IP sound similar. For Scrabble fans, A Po is actually a small chamber pot, so secondary meanings of I pee and I po are also confusingly similar.

The stress on both Facto and Factor is on the first part of the word, and the IP bit is mostly generic. I think that on balance, we can say that the two marks sound and look similar.

2. Goods and Distribution Channels

Both IP Facto and IP Factor are intellectual property blogs accessible over the Internet.  My focus is Israel related IP and the IPO Facto will probably have a UK focus. I have a very British sense of humour, and so does Nicole, from her IPKAT postings. I think that the services are confusingly similar.

3. Any Other Issues

I don’t think I have a case for willful copying and inequitable behaviour. I suspect that I could make a case that a national IP office would be expected to do basic due diligence, and this is willful negligence analogous of Nelson putting the telescope to his blind eye.

I suspect that I have  Common Law rights, having clocked up nearly 300,000 hits in a blogging career spanning the best part of a decade, with over 1000 blog posts and a frivolous law suit from a prominent local IP lawyer who should have known better.

Well readers. What’s your verdict?

Categories: UKPTO, unjust enrichment

4 replies

  1. no chance Michael, repuation yes, maybe even goodwill because we British are nice that way, but there is nothing that even remotely seems like a misrepresentation and damage, no way. This posting is pulling in *trade* if a blog has trade so your damage is negative at best. So you score only one of three of the classic passing off trinity and must buy Nicola a soda pop

    • Confused with your point. I am providing an information service. If there is a likelihood of confusion in the eyes of the viewer as to whose opinions are being expressed, which could occur if we were quoted by a third party, for example, that can be damaging. she is trading on my goodwill and reputation.

  2. Go on, sue another lawyer. We could do with the laugh.


  1. A blog by any other name | Intellectual Property Office blog

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