A beautician from Gloucester has been threatened with legal action by jewellery giant Tiffany & Co (“T&Co”). Tiffany Parmar applied to trade mark the name “Cotswold Lashes by Tiffany” but the jewellers have threatened to oppose the application as they deem it “likely to cause confusion” with their well-known brand.
Is this legitimate protection of IP rights or just another big name targeting an underdog?
Ms Parmar applied to trade mark her business name back in April of this year, in classes for cosmetics, education/training services and hygienic and beauty care. No objections were raised by the UK Intellectual Property Office (UKIPO) so her application progressed to publication in July 2018. It was at this stage Ms Parmar received correspondence from T&Co threatening to oppose the application if it is progressed. As is often the case nowadays, Ms Parmar swiftly took to social media with an open letter to T&Co in response, including snippets from their letter.
Tiff with Tiffany
T&Co is a New York-based jewellery company, who have been operating since 1837. With their worldwide net sales of $1.1bn and their instantly recognisable teal blue jewellery boxes, there can be no doubt that T&Co has a reputation as a luxury brand. Seeking to protect the standing of their name, T&Co have acquired numerous registered rights globally, such as the EU word mark for “Tiffany” – also registered in class 3 for cosmetics.
But can they truly say that the use of “Tiffany” by an eyelash extension specialist from the southwest of England would cause confusion and bring their global jewellery brand in to disrepute?
As the application by Ms Parmar contains T&Co’s whole mark and is to be registered in the same class, it is perhaps understandable why T&Co challenged the registration. However, they will have to provide sufficient evidence to show that the registration of Ms Parmar’s mark would conflict with and cause confusion with their brand. Not an easy task.
Honest concurrent use
Ms Parmar started her business, “Lashes by Tiffany”, from her home in 2014 and sought to expand her offering with her “Cotswold Lashes by Tiffany”. This name choice indicates not only the characteristics of the services provided – eyelash extensions – but also the geographical origin of the business. On this basis, it would appear that Ms Parmar has chosen the name to incorporate all of these elements and keep the branding true to her business. Arguably any subsequent use of Tiffany within the name would be honest use of her own name. It is unlikely to have been included to benefit from or take unfair advantage of the goodwill of the jewellery brand.
Having gone through examination at the UKIPO and been published, the application is presumably now in an extended publication period (of 3 months). If it is not dropped or no agreement is reached between the parties, T&Co are likely to proceed with opposing the application and can do so by making third party observations or by lodging a formal opposition.
Third party observations do not compel the UKIPO to act. It may then be that T&Co opt for the more formal approach and oppose the application if they are truly concerned that Ms Palmer’s trade mark conflicts with their earlier mark(s). It’s up to each of the parties now to see if sensible discussions can reach a resolution or whether the matter will progress to the formal UKIPO opposition process.
Would T&Co be more agreeable to a logo mark for Ms Parmar’s brand? Will the UKIPO side with T&Co and their earlier rights? We will have to wait and see.
There is some practical advice that can be taken from this case though. It did not take long for T&Co’s formal letter to make its way onto social media. This is something that is becoming much more common. It is key for reputable brands to protect and preserve their intellectual property rights but like many well-known organisations before them, this scenario serves as a reminder to T&Co to think about the best way to deal with the situation before aggressively pursuing the “little guy”. A friendlier approach in the first instance may avoid a trial by social media which could potentially do more damage to the brand than the registration itself.
On October 17, 2018