In a case that revealed the extraordinary power of marketing, Aleksandr the meerkat and his 750,000 Facebook ‘friends’ played a critical role in achieving victory for price comparison website comparethemarket.com in a trade mark dispute with rivals GoCompare.com.
The loveable star of scores of television advertisements was left standing tall after comparethemarket overcame GoCompare’s objections and won the exclusive right to use, in combination, the three ordinary English words that make up its name.
The company behind comparethemarket.com, BGL Group Limited, already owned trade marks in respect of the composite word. However, its bid to win similar protection for the phrase ‘compare the market’ – with spaces – in the context of price comparison sites was hotly opposed by GoCompare.
Lawyers representing GoCompare insisted that the phrase was ‘merely descriptive’ and commonly used by numerous price comparison sites. However, an official acting on behalf of the Registrar of Trade Marks ruled that the three words, read together, had developed a ‘distinctive character’ – partly due to the phenomenal success of the meerkats advertising campaign.
More than £90 million had been spent on promoting the comparethemarket brand in the first three years after the website went live in 2007. Turnover grew exponentially from £6.6 million in the first year to almost £66 million in 2010. By then comparethemarket had a 23 per cent share of the price comparison market, only eclipsed by GoCompare with over 30 per cent. The first meerkat advertisement appeared in January 2009 and, by 2011, Aleksandr – fictional boss of ‘comparethemeerkat.com’ – had three-quarters of a million Facebook ‘friends’.
GoCompare argued that the phrase ‘compare the market’ was customarily used on a wide range of price comparison sites and could relate to myriad different markets and myriad different comparisons within each one. The phrase was insufficiently precise to merit registration as a trade mark.
The official accepted that such a descriptive phrase would ordinarily be excluded from registration. However, the evidence was that it had only begun to appear on other websites after the launch of comparethemarket.com and that it was sometimes deliberately used by others to pick up hits from confused Internet surfers.
The phrase was often employed by the press and others to denote the website and had, through extensive marketing, developed a distinctive character in the public consciousness and thus qualified for registration. GoCompare’s opposition to the registration was rejected.
