Lessons to learn when it comes to evidence

The applicant filed a UK trade mark application for DG FASHION, covering paper aprons and paper clothing in class 25. This was opposed by Dolce & Gabbana on the basis of its earlier class 25 marks for D&G and DG.

The opposition was successful.

However, Dolce & Gabbana may have been a bit fortunate. The UKIPO decision criticises the evidence which was filed to support the opposition grounds based on reputation and unfair advantage (section 5(3) of the Trade Marks Act 1994) and on passing off (section 5(4)).

A lot of the evidence was found to be irrelevant or otherwise inadmissible on the basis that it post-dated the application date of the opposed mark or was from an unknown date, related to Dolce & Gabbana but not the D&G/DG marks or did not relate to the UK.

In spite of this, but perhaps fortuitiously, the Hearing Officer concluded that Dolce & Gabbana's evidence was enough to show the goodwill necessary for passing off and the opposition succeeded on that basis. Nevertheless, the distinct impression one gets is that it was a case of "by the skin of their teeth".

For a company of the stature of Dolce & Gabbana, it should have been straightforward to file plenty of relevant and admissible evidence to prove reputation and goodwill in its D&G and DG marks in the UK. Evidence always needs to be carefully selected.

As an aside, having found holes in the evidence, it is a little strange that the Hearing Officer chose to start by finding in Dolce & Gabbana's favour on the passing off grounds, which is reliant on that evidence; and then not dealing with the other grounds, including section 5(2)(b) which only requires a comparison of the marks and the goods.

Case Ref: 0-544-18

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