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“If your hair is done properly and you’re wearing good shoes, you can get away with anything.” – Iris Apfel
Not according to the EUIPO in the recent decision in Opposition No. B002757717 of J. Choo Limited v Liangliang Ren, when the Opposition Division handed down a decision to reject the mark:
for “Electric hair curlers; Electric hair rollers; False hair; False hair for Japanese hair styling (kamoji); Hair rollers; Claw clips [hair accessories]; Sticks for use in decorating the hair; Hair clips; Hair bands; Hair barrettes; Hair curlers, other than hand implements; Hair extensions; Wigs; Hair pieces; Hair weaves; Hairpieces for Japanese hair styling (kamishin); Toupees; Hairpieces; Hair curlers, other than hand implements; Hair curlers, other than hand implements [non-electric]; Electric hair curlers” in class 26, based on earlier rights in relation to footwear in class 25 for the mark:
In August 2016, J. Choo Limited (trading as Jimmy Choo) filed opposition to the EU trade mark application for the RECHOO mark, which had been filed on 13 May 2016.
Whilst various earlier rights were alleged in the Notice of Opposition including
in respect of goods including fragrances, sunglasses, leather goods, handbags, belts and footwear, as well a claim to reputation in these marks for these goods, the matter was ultimately decided on whether there was sufficient reputation in the CHOO mark in respect of footwear to be able to block the application for the RECHOO mark, under Article 8(5) of the EU Trade Mark Regulation.
Article 8(5) of the EU Trade Mark Regulation prohibits registration of the mark where there is:
an earlier registration;
the contested (later) mark and the earlier mark are identical or similar;
the earlier mark has a reputation in the EU, which must be prior to the filing date for the contested mark; and
use of the later mark is without due cause and would lead to the risk that unfair advantage might be taken of the distinctive character or repute of the earlier mark or would cause detriment to the distinctive character or repute of the earlier mark.
These grounds are cumulative, and all must be satisfied in order for there to be a successful finding under Article 8(5). Furthermore, an opposition may still fail if the applicant establishes due cause for the use of the contested mark.
Reputation: The EUIPO was able to conclude, from the evidence filed in support of the opposition, that the earlier JIMMY CHOO mark had been subject to long-standing and intensive use, and it enjoyed a consolidated position among leading brands as attested by diverse sources including independent press coverage and advertising for at least 10 years prior to the contested application having been filed. The earlier marks were frequently described as luxury brands, and the goods at issue were luxury goods. The EUIPO found it “clear that the trade mark JIMMY CHOO enjoys a considerable reputation within the EU, at least for footwear”.
The EUIPO was also prepared to recognise that, at the relevant date of May2016, despite the CHOO mark having not been directly applied to goods, it had been consciously used in various marketing and sales campaigns, and was interchangeably used to reference the JIMMY CHOO brand. Use made by independent journalists writing about the fashion industry showed that in the public perception the JIMMY CHOO mark and CHOO mark are closely linked and exchangeable; the EUIPO was prepared to recognise that the CHOO mark enjoys a significant reputation within the EU, at least for footwear.
Without due cause: The applicant did not claim to have due cause using the contested mark, and it was therefore assumed that no due cause existed.
The marks were considered to be visually similar to an average degree and aurally highly similar. Conceptually, in so far as CHOO is perceived as a surname in both marks there was conceptual similarity, but for the part of the public that did not perceive CHOO as a surname, the marks would not be similar.
The EUIPO considered the contested goods, including hair accessories and appliances like hair ornaments, hair fasteners and false hair as well as hair curlers and rollers to be different to footwear.
Link between the marks: The EUIPO concluded that the relevant public would establish a link between the marks; the establishment of such a link requires the relevant sections of the public for each of the goods covered by the trade marks in dispute to be the same or to overlap to some extent. In this case the EUIPO found that both trademarks targeted the general public with the goods aimed at the improvement of appearance of the person, or stylisation of the image of the person, being achieved by wearing particular footwear, as well as by styling the hair with the use of hair ornaments and fasteners, by curling hair or wearing false hair in different forms to make the hair look more attractive.
Risk of injury: To succeed in an opposition under Article 8(5), it is necessary to establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events, not that it is a mere possibility.
From the evidence filed, the EUIPO could see from press coverage that the earlier mark appears in different forms in publications, and considered the public likely to perceive the contested mark as a version of the earlier CHOO mark, a new line of products or a new refreshed look, and therefore as a new and stylised “re-choo” launch of related products within the domain of personal care fashion products.
Considering the similarities between the signs, the reputation of the earlier CHOO mark and the fact that the goods belong to linked industries that have to do with fashion and improving the image of the person, the transfer of image from the earlier CHOO mark to the contested mark was considered to be possible. This was seen to lead to the contested mark being able to profit from the attractiveness and value invested in the earlier CHOO mark which has been achieved by Jimmy Choo by conscious, persistent and costly marketing efforts. The EUIPO concluded that the contested mark was likely to take unfair advantage of the distinctive character and the repute of the earlier CHOO mark.
There are relatively few successful decisions based solely on Article 8(5). Consistent, conscious and persistent marketing efforts by an opponent in relation to its earlier marks are clearly important, as is the ability to present evidence of that effort.
If you have read this article and would like further advice, please contact a member of our Trade Mark team who will be happy to assist you.
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