28 juin 2019
Class 25: After ski boots; Anglers' shoes; Ankle boots; Après-ski boots; Apres-ski shoes; Aprons; Aprons [clothing]; Articles of clothing for theatrical use; Articles of clothing made of hides; Articles of clothing made of leather; Articles of sports clothing; Ascots; Ascots (ties);Athletic clothing; Athletic footwear; Athletic shoes; Athletics shoes; Athletics vests; Babies' clothing; Babies' pants [clothing]; Babies' pants [underwear]; Babies' undergarments; Babushkas; Baby bodysuits; Baby bottoms; Baby bunting [clothing]; Baby clothes; Baby doll pyjamas; Baby layettes for clothing; Baby pants; Baby tops; Balaclavas; Ball gowns; Ballet shoes; Ballet slippers; Ballet suits; Ballroom dancing shoes; Cardigans; Cashmere clothing; Cashmere scarves; Casual footwear; Casual shirts; Casual trousers; Casualwear; Children's clothing; Children's' clothing; Children's footwear; Children's headwear; Climbing boots; Climbing boots [mountaineering boots]; Climbing footwear; Clothes; Clothes for sport; Clothes for sports; Clothing; Clothing for babies; Clothing for children; Clothing for cycling; Clothing for gymnastics; Clothing for leisure wear; Coats; Coats for men; Dance shoes; Dance slippers; Denim jackets; Denim jeans; Denims [clothing]; Dinner jackets; Dinner suits; Dress shirts; Dress shoes; Dress suits; Dresses; Dresses for evening wear; Dresses made from skins; Dungarees; Exercise wear; Fancy dress costumes; Fashion hats; Figure skating clothing; Football boots; Football boots (Studs for -);Football jerseys; Football shirts; Football shoes; Footless socks; Footless tights; Footmuffs, not electrically heated; Footwear; Footwear [excluding orthopaedic footwear]; Footwear (Fittings of metal for -); Footwear for men; Footwear for men and women; Footwear for snowboarding; Footwear for sport; Girls' clothing; Gloves; Gloves [clothing];Gloves for cyclists; Golf footwear; Golf pants, shirts and skirts; Golf shirts; Golf shoes; Golf shorts; Golf skirts; Golf trousers; Gowns; Gym boots; Gym shorts; Gym suits; Gymnastic shoes; Gymshoes; Gymwear; Hiking shoes; Hockey shoes; Infant wear; Infants' boots; Infants' clothing; Infants' footwear; Infants' shoes; Infants' 34 trousers; Infantwear; Inner socks for footwear; Jackets; Jackets being sports clothing; Jackets [clothing]; Jeans; Jerkins; Jerseys; Jogging sets [clothing];Jogging shoes; Jogging suits; Jogging tops; Judo suits; Jump Suits; Jumpers; Jumpers [pullovers]; Jumpers [sweaters]; Jumpsuits; Laboratory coats; Lace boots; Ladies' boots; Ladies' dresses; Ladies' footwear; Ladies' outerclothing; Ladies' suits; Ladies' underwear; Leather belts [clothing];Leather clothing; Leather (Clothing of -); Leather (Clothing of imitations of -); Leather coats; Leather garments; Leather headwear; Leather jackets; Leather pants; Leather shoes; Leather slippers; Leather suits; Leather waistcoats; Leg warmers; Leggings [leg warmers]; Leggings [trousers]; Legwarmers; Leg-warmers; Leisure clothing; Leisure footwear; Leisure shoes; Leisure suits; Leisure wear; Light-reflecting coats; Linen (Body -) [garments];Linen clothing; Lingerie; Long jackets; Long johns; Long sleeve pullovers; Long sleeved vests; Long-sleeved shirts; Motorcycle gloves; Motorcycle jackets; Motorcycle rain suits; Motorcycle riding suits; Motorcyclist boots; Nightdresses; Nightgowns; Nighties; Nightwear; Nurse dresses; Nurse overalls; Nurse pants; Nurses' uniforms; Pajama bottoms; Pajamas; Pajamas (Am.); Pantaloons; Pants; Paper aprons; Paper clothing; Paper hats [clothing]; Party hats [clothing]; Polo boots; Polo knit tops; Polo neck jumpers; Polo shirts; Polo sweaters; Pullovers; Pyjamas [from tricot only]; Rain boots; Rain coats; Rain hats; Rain shoes; Rain suits; Rain wear; Rainproof clothing; Rainproof jackets; Rainshoes; Rainwear; Ready-made clothing; Ready-to-wear clothing; Rubber soles for jikatabi; Rubbers [footwear]; Rugby boots; Rugby jerseys; Rugby shirts; Rugby shoes; Rugby shorts; Rugby tops; Running shoes; Running Suits; Running vests; Sandals; Sandals and beach shoes; Sarees; Scarves; School uniforms; Shift dresses; Shirt fronts; Shirts; Shirts for suits; Shoe covers, other than for medical purposes; Shoe inserts for non-orthopedic purposes; Shoe uppers; Shoes; Shoes for casual wear; Shoes for infants; Shoes for leisurewear; Shoes with hook and pile fastening tapes; Tee-shirts; Tennis dresses; Tennis pullovers; Tennis shirts; Tennis shoes; Tennis shorts; Tennis skirts; Tennis wear; Thermal clothing; Ties [clothing]; Tights; Uniforms; Uniforms for commercial use; Uniforms for nurses; Visors; Visors [clothing]; Volleyball jerseys; Volleyball shoes; Walking boots; Walking shoes; Walking shorts; Warm-up jackets; Warm-up pants; Warm-up suits; Warm-up tops; Yoga bottoms; Yoga pants; Yoga shirts; Yoga shoes.
Class 25: Paper aprons; Paper clothing.
Class 25: Articles of outer clothing, but not including footwear or headgear.
Class 25: Articles of outer clothing, all for men and boys, but not including footwear or headwear.
Class 3: Cosmetics in general, including: face creams; mascara; eye liner; eyeshadows; make-up pencils; face clays; lipsticks; foundation; body lotions; nail varnishes; nail strengtheners; acetone; cosmetic kits; perfumery, including perfumes; solid perfumes; deodorants; essential oils; soaps; liquid soaps; cakes of toilet soap; foam bath; talcum powder; dentifrices; shampoos; hair lotions; Permanent waving and setting preparations for the hair; gel; hair dyes; sun-tanning oils and lotions; depilatory preparations; detergents; bleach; fabric softeners [for laundry use]; soaps; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring, scraping and abrasive preparations.
Class 9: Spectacles; sunglasses; spectacle frames; contact lenses; containers and cases for contact lenses; apparatus for recording, transmission or reproduction of sound or images; sound recording discs; scientific, nautical, surveying and electric apparatus and instruments; photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counter-operated apparatus; cash registers.
Class 18: Bags; handbags; sports bags; gent's handbags; pocket wallets; coin purses; purses; travelling bags; trunks; rucksacks; briefcases; document holders; key cases (leatherware); vanity cases (not fitted); skins, hide and leatherware; leather and goods made of leather; imitations of skins and leather and goods made of these materials; parasols; parasols; umbrellas; walking-sticks; whips; harness and saddlery.
Class 25: Clothing for gentlemen, ladies and children in general, including, clothing in leather; shirts; jumpers [shirt fronts]; skirts; suits; jackets [clothing]; trousers; shorts; sports jerseys; T-shirts; pyjamas; stockings; singlets; corsets [underclothing]; suspenders; pants; brassieres; underwear; hats; headscarves; neckties; waterproof clothing; overcoats; topcoats; swimsuits; tracksuits; windcheaters; ski trousers; belts; furs; sashes for wear; gloves; dressing gowns; footwear in general, including, slippers, shoes, sports shoes, boots and sandals.
Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 9: Spectacles; sunglasses; spectacle frames; spectacle glasses; spectacle cases; optical apparatus and instruments.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins and hides; trunks and suitcases; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
The applicant, cherryandjerrylimited (the Applicant), filed an application to register the DG FASHION sign (above left) (the Opposed Mark) for a range of goods in class 25.
Both Douglas and Grahame Limited (DGL) and Dolce & Gabbana Trademarks SRL (D&G) opposed this application. DGL (O/332/18) opposed the application on the basis of its registered rights in the DGL marks (above right).
The goods were found to be of varying degrees of similarity, DGL's marks were found to have a medium degree of distinctive character and a reasonably high degree of similarity with the Opposed Mark.
As a result, it was found that the relevant public would confuse the marks, even in respect of the goods that were found to have a low degree of similarity. The DGL opposition succeeded in respect of all goods in the Applicant's specification except for "Paper clothing; Paper aprons".
D&G (O/544/18) opposed the application on the basis of its registered and unregistered rights, reputation and goodwill in the D&G marks (above right). D&G's business was found to have protectable goodwill in the field of clothing, and this goodwill was found to have spilled over into other goods, despite the lack of invoice evidence provided for them.
It was held that paper clothing and paper aprons clearly fell into the same field of activity as that covered by the D&G marks. The marks were found to be highly similar and the Applicant's contention that "DG" is non-distinctive was dismissed.
As a result, "DG Fashion" was held to be likely to amount to a misrepresentation to the public which could foreseeably lead to damage to D&G's business, and so the opposition succeeded in full. The other grounds were not considered.
The Applicant went on to appeal (O/174/19) both decisions on identical grounds, the main case being that the two decisions could not stand together. The Applicant argued that the effect of both decisions was that the distinctive element of the earlier marks was DG, "irrespective of stylisation".
Therefore, the distinctiveness test applied in both decisions could not be logically satisfied. The Applicant argued that, because both Opponents had been using "DG" for the same class of goods, the "DG" element had a low level of distinctiveness.
"Fashion", however, was distinctive even in the fashion sector, as it is often used by smaller fashion companies in their trade marks but never by medium sized or international companies in their trade marks.
The proposed effect of the Applicant's submission was that the Opposed Mark could be concurrently registered without giving rise to a likelihood of confusion with respect to the DGL marks and/or a misrepresentation with respect to the D&G marks.
The Appointed Person disagreed with the position of the Applicant. An important element was that the DGL opposition succeeded in respect of all goods specified except for "Paper clothing; Paper aprons", while the D&G opposition was only in relation to "Paper clothing; Paper aprons".
For this reason and due to the existence of, and the absence of any validity challenges to, the earlier registered trade marks, there was a presumption that they satisfy the distinctiveness test.
The Applicant had not shown that there was such extensive exposure to the public of marks including the DG element that its distinctiveness had been diluted.
Furthermore, since there is no requirement to prove confusion, the fact that there was no evidence of confusion put forward by DGL or D&G did not matter, particularly as no evidence of parallel trade had occurred in the UK.
Regarding the Applicant's submission that "fashion" could be distinctive for goods in Class 25, the Appointed Person did not disagree with the positions of the Hearing Officers in the original Oppositions.
The first hearing found that:
The second found that "fashion" is not distinctive, but indicates either a type of clothing or the clothing business and so is non-distinctive for clothing goods.
As a result, the joint appeals failed.
Case Ref: O/174/19