Details of the case
The emerging social media app BeReal sent a cease and desist letter to a small womenswear company over the use of the same name. The two companies are expected to take the dispute to a tribunal later in upcoming months.
BeReal emerged as a popular photo-sharing social media platform of French origin, which was conceptualized and developed by Alexis Barreyat and Kevin Perreau in 2019. Although officially launched in 2020, it gained significant traction and widespread attention in the early part of 2021, swiftly becoming one of the most sought-after applications. Remarkably, according to data shared by Social Media Today, the app witnessed a remarkable surge in downloads, with a staggering 315% increase in 2022 compared to previous years.
BeReal holds an impressive position as the fourth most downloaded app in the social media domain, trailing behind heavyweights such as Instagram, Snapchat, and Pinterest. As of August 2022, the platform boasts a staggering user base, with over 10 million active daily users and a monthly user count exceeding 21.6 million. Setting itself apart from other platforms, BeReal distinguishes itself by emphasizing authenticity, encouraging users to present their unfiltered and genuine selves to the world.
In addition to submitting a trademark application in the software and internet domains, the Paris-headquartered BeReal also pursued trademark registration in the realm of clothing. When the company sought to officially register the trademark in the United Kingdom, a company that shares the same name raised an objection in June 2022.
BeReal clothing is a London-based womenswear brand that started out during lockdown to empower women's fashion. Batool Zaidi, the owner of BeReak clothing, filed to register the name of her company in the UK in November 2020 - a year before the French namesake filed in the UK. A month after raising an opposition, Ms. Zaidi received an order to stop using the name “BeReal” or face court action. It stated that her brand was infringing a trademark by shipping to Europe - a claim she rejects, as she says she only sends clothes to UK and US customers.
In its statement to BBC, BeReal claimed that their priority is to “protect” their users. "With actual consumer confusion arising from the logos being sold, we have to also protect the brand we have built. Ultimately, we wish for both of our businesses to move forward with fair practices that distinguish our company identities.”
Likelihood of confusion
To establish a likelihood of confusion, a brand typically needs to demonstrate that there is a potential for confusion among consumers regarding the origin or source of the products or services in question. While it is true that similarity or overlap in the classes of goods or services can strengthen the argument for likelihood of confusion, it is not an absolute requirement.
In cases where the products or services are not sold in the same classes, a brand can still present evidence and arguments to show that there is a likelihood of confusion based on other factors. These factors may include similarities in the brand names, trademarks, logos, packaging, target consumers, marketing channels, or the overall impression created by the respective brands.
As London-based BeReal has sought trademark registration of their name for clothing earlier than the app, and Paris-BeReal is yet to start using their name in connection with clothing-related products, there is little evidence to prove likelihood of confusion. Regardless of the outcome of this dispute, as the application for a trademark by the app has encompassed multiple categories, once the proceedings are finalized, it will most likely be permitted to advance towards registration in uncontested classes of goods and services.