Tiffany & Co ("T&Co") has been successful in its opposition of a trade mark application for "Cotswold Lashes by Tiffany".
As we have discussed in a previous blog post, here, T&Co threatened to oppose beautician, Tiffany Parmar's trade mark application, at the UK Intellectual Property Office (UKIPO) - and as this decision shows, the threats were not empty.
How?
In reliance on five earlier UK and EU trade marks for "Tiffany" and "Tiffany & Co" the jewellery brand opposed the registration of the mark on the basis that:
the application is a very similar mark to that of T&Co's registered marks, for identical and/or similar goods and services;
use of the mark would take unfair advantage of the jewellery brand's reputation and dilute the distinctiveness of their marks; and
use of the mark in relation to the goods and services applied for amounts to passing off.
Why?
Out of the five marks relied upon, two of T&Co's EU marks are registered for cosmetics and one for educational services. Both classes in which Ms Parmar sought to register her mark - making these goods and services identical. Additionally, due to the nature of her business, Ms Parmar also sought her mark to cover beauty services. Whilst T&Co's marks do not cover this class, the Hearing Officer noted that cosmetics are complementary to beauty treatments so there is a low level of similarity, in this regard, between the application and T&Co's marks.
The Hearing Officer also noted that visually and aurally the marks had a low degree of similarity.
In consideration of this and the concept of imperfect recollection the Hearing Officer found that, given the similarity of the marks and the identical and/or similar goods or services offered there was a likelihood of consumers being confused that the goods and services offered by Ms Parmar are those of T&Co or provided under agreement with them. Even though, on the face of it the word(s) which make up T&Co's marks and Ms Parmar's application are only considered to have limited similarity, this was offset by the similarities of the goods and services. There is no minimum threshold of similarity in this regard for a likelihood of confusion to be found. Under the provisions of s.5(2)(b) of the Trade Marks Act 1994 Ms Parmar's application was refused.
Consideration then turned to the impact of Ms Parmar's signs on the reputation of T&Co's marks and its claims of passing off. Whilst the marks cover the same goods and services the Hearing Officer found that, based on the evidence provided, T&Co had not shown that their marks have a reputation for, nor that the average consumer would equate their brand with cosmetics, training courses or beauty therapy. They do not offer such services. The reputation requirement was not met and their challenge in relation to passing off failed.
What now?
As all classes for which Ms Parmar's mark was applied for infringed T&Co's earlier rights, their opposition was successful. Ms Parmar's application will not proceed to registration.
The essential function of a trade mark is to distinguish the goods and/or services of your business from those of others. It is unlikely that Ms Parmar could amend her application to get around the issues raised as an alternative application would not cover her core business offerings. It may be back to the drawing board for a brand name - "Cotswold Lashes by TP" perhaps?
Points to consider
This case highlights the benefit of carrying out searches of the trade mark register before seeking trade mark registration, particularly to ascertain what classes potentially similar marks are registered in. This can save time and money in the long run as Ms Parmar now has to pay £1,000 to T&Co as well as covering her own expenses.
Whilst they were successful overall, this matter also highlights the importance of the evidence filed. In reliance on the documentation provided by T&Co the Hearing Officer could not deduce that it had an enhanced level of distinctiveness. This is even with its global brand status. Given the wide range of goods and services their marks are registered to cover, it may have bolstered their opposition to have included turnover and advertising figures for a particular sector in which they operate i.e. jewellery.
