Legal Updates

Intellectual Property – Opposition to Trade Mark Registration – Error by Hearing Officer

The case of Lunan Group Ltd v Edwin Co Ltd [2006], involved the opposition to a Trade Mark application. The applicant owned the Trade Mark ‘Fiorelli’ and applied to have it registered in various classes. The application was opposed by the respondent on the grounds that it was too similar to their own Trade Mark ‘Fiorucci’. They sought to prevent ‘Fiorelli’ from being registered under s.5(2)(b) of the Trade Marks Act 1994.

Both marks were being used in the fashion or designer goods market. Applications were made by the Lunan Group to register ‘Fiorelli’ in classes 9 (spectacles and sunglasses), 14 (watches and jewellery), 18 (bags, small leather goods and umbrellas) and 25 (clothing). The opposition to these applications was deemed successful by the hearing officer. The applicant therefore appealed.

The applicant’s grounds for appeal were on the basis that the hearing officer made a number of material errors when considering the application. The most important argument made was in connection with ‘parallel trading’ –evidence was provided to show that the goods had been traded for a significant period of time under the two marks in the same market without there being any confusion between them by members of the public.

The appeal was allowed:-.

§                       The evidence supporting the fact that the two marks had traded goods in the same market for a substantial period of time was an important consideration which the hearing officer should have considered

§                       If he had factored into his decision this evidence, he would have reached the conclusion that the marks were not similar enough to cause the public confusion

§                       It was therefore held that there was no likelihood of confusion between the two marks within the meaning of s.5(2)(b).

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© RT COOPERS, 2006. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.



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