‘Sun on Sunday’ trademark opposed by publisher NCJ Media

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Following the phone-hacking allegations leading to the closure of its Sunday tabloid, the News of the World, in July 2011, News Group launched a Sunday edition of its Monday–Saturday tabloid The Sun in February 2012, under a new masthead.

Ahead of the launch, News Group filed UK trademark applications in July 2011 to register the marks ‘THE SUN ON SUNDAY’ and ‘SUN ON SUNDAY’, in relation to newspapers and electronic and online publications (among other goods and services in a range of classes). The applications were opposed by NCJ Media, the publisher of the regional north-east England newspaper Sunday Sun, dating back to 1919.

The opposition was on the grounds that: (a) the use of the marks would amount to passing off (based on NCJ Media’s goodwill and reputation in the name SUNDAY SUN); and (b) there was a likelihood of confusion with its UK trademark registration for the mark SUNDAY SUN (filed in 1980), registered for ‘newspapers for sale in the counties of Cleveland, Cumbria, Durham, Northumberland, North Yorkshire and Tyne and Wear’…

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