February 2025 In a recent trade mark opposition in Benelux, the opponent appointed ChatGPT as their representative, which did not go to plan.
Background
In November 2023, Tom Grashof, a Dutch national, filed a BENELUX application for the trade mark “ART PENGUIN”, shown below, covering goods in class 2, for paints, primer coatings and pigments, and class 16, for paper, bookbinding material, artist supplies and stationery items.
Penguin Books Limited, own several European Union trade mark registrations containing the element “PENGUIN” in either word or logo form and these covering goods in class 16 including books, printed publications, stationery sets.
Based on these existing registrations, including the well known and loved penguin logo above, Penguin Books Limited filed an opposition against the “ART PENGUIN” application, based on the aural, conceptual and visual similarities of the marks, as well as a likelihood of confusion between the marks and the goods being identical or highly similar.
The Representative
Interestingly, the applicant for “ART PENGUIN” appointed Open AI’s ChatGPT as his representative for the opposition, and it appears that he used the AI software to formulate and set out his arguments against the opposition, without any review or addition prior to submitting his defence.
The AI’s Arguments
In the arguments against Penguin Books’ opposition, ChatGPT provided the following arguments:
First, it noted that the penguin element in the opposed mark was ‘modern’ compared to the ‘old school’ penguin featured in Penguin Books’ marks. It therefore surmised that there was no visual similarity.
Second, ChatGPT mistakenly compared “ART PENGUIN” with a non existent trade mark for “PENGUIN BOOKS”. ChatGPT asserted that there was no aural similarity as the applicants’ mark contains the element “ART-”.
Third, the opponent’s arguments repeated the comparison of the modern and old school styles, rendering the marks conceptually dissimilar.
Finally, ChatGPT did not review the similarities of the goods or services.
The Result
As the applicant provided no arguments against the similarities of the goods or services, the BENELUX Office found that the goods were similar.
The Office found that the marks were similar, conceptually, as they both referred to penguins. The marks were found to be highly similar aurally, with the only difference in the word elements being “ART”. Finally, the marks were found to be similar, visually, to a certain extent.
Therefore, the Office found that there was a likelihood of confusion and allowed the mark to be registered in class 2 only, with class 16 being removed from the application.
Conclusion
Whilst AI is fast becoming a useful tool in creating and honing documents and text in all walks of life, it still requires thorough reviewing and full consideration of the contents before finalising. Unfortunately, as shown in this case, AI is not quite ready to represent legal IP matters. For now, appointing human legal representatives is the best way to achieve success in oppositions.
