Invalidity of clothing mark at the UK IPO

UK MARNICOUNT COMPANY LIMITED registered the MarniCount & logo mark as a UK trade mark in May 2014 for various articles of clothing, footwear and headgear (above right).

In March 2018, Marni Group S.R.L. applied to declare the registration invalid on the basis of its earlier rights in the trade mark MARNI for clothing, footwear and headgear (amongst other goods and related retail services).

Marni Group acknowledged the additional logo element of the Contested Mark but claimed that the words MarniCount were the more dominant feature of the mark. It also claimed that the words had been deliberately separated through the use of capital and lower case letters to emphasize the name 'Marni'.

As such, and given that the goods in question were identical to one another, Marni Group claimed that consumers were likely to be confused between the two marks. Marni also relied on both its reputation and its unregistered rights in its MARNI mark.

Marni Group filed evidence to show that clothing bearing the mark MARNI had been sold continuously in the UK since 2001. During that time, the brand had been featured in UK editions of international fashion magazines, examples of which were filed as evidence.

Marni Group was able to provide substantial turnover and advertising expenditure figures from the years preceding the cancellation application. The Registrar considered that the evidence demonstrated that Marni Group had put its mark to genuine use on clothing, footwear, and headgear in the UK and by extension the EU (the mark relied upon was an EU trade mark) in the relevant time period.

With use established and the goods being self-evidently identical, the Registrar's analysis focused largely on a comparison of the marks. The Registrar stated that the average consumer of the goods would pay an average degree of care and attention on viewing the trade mark. Consumers would primarily encounter the marks in a visual context (on physical labels, in magazines, online, etc) but might also hear the marks spoken aloud.

In comparison to the large logo element above the words MarniCount in the Contested Mark, the Registrar accepted that, due to their size, the words carried less weight in the overall impression of the mark; however, they did still make a reasonable independent contribution.

As such, the marks were found to have a low degree of visual similarity. Because the logo element of the Contested Mark would not be spoken aloud, the phonetic similarity between the marks was average. The conceptual similarity between the marks was considered neutral. The earlier mark, MARNI, was considered to have higher than average distinctiveness.

Assessing the relevant case law, and taking into account the distinctiveness of the earlier mark and the interdependency principle – that a lower degree of similarity between the marks can be offset by a higher level of similarity between the goods, and vice versa – the Registrar found there to be a likelihood of confusion on the part of consumers.

Marni Group's invalidity application also succeeded on the ground of passing off that a substantial number of the relevant public were likely to be deceived into believing that goods bearing the contested mark originated from Marni Group, which in turn stood to damage Marni Group's business, eg by way of diverted sales.

The Registrar did not comment substantially on Marni Group's claim of damage to reputation in its trade mark, as the success of this ground of opposition was tied to the question of whether or not there was a likelihood of consumer confusion (ie whether or not consumers would believe that goods bearing the marks came from the same or related undertakings).

However, the invalidity application succeeded in full under s. 5(2)(b) and s. 5(4)(a) Trade Marks Act 1994.