1 October 2012Trademarks

US brand targets online retailer over 'shabby chic' name

A US company has ordered a UK-based online retailer to remove the name ‘shabby chic’ from its website, which sells vintage goods including linen and picture frames.

Shabby Chic Brands, which owns a trademark for ‘shabby chic’ (a form of interior design), has threatened legal action if the owner of shabbychicoriginals.co.uk does not change its name.

The site’s owner, Lizzy Daly, has vowed to fight the brand over the term which, she says, is generic. According to reports, she says an online search revealed 200 articles containing the expression, only four of which related to the US brand.

This is not the first time Shabby Chic Brands has targeted an online retailer for using the name ‘shabby chic’. In April this year it filed a complaint at the World Intellectual Property Organization (WIPO) over the website ‘frenchshabbychic.net’. The site redirected anyone searching ‘French shabby chic’ to another site selling furniture.

Shabby Chic was attempting to have the website removed through the Uniform Domain-Name Dispute-Resolution Policy arbitration process. However, the panellist overseeing the case refused, ruling that ‘shabby chic’ was a generic term.

In the ruling on June 5, 2012, the arbitrator Harrie R. Samaras said: “It is clear from the evidence of record and the panel’s own Internet searching that ‘shabby chic’ is used ubiquitously on the Internet by many third parties on their websites, or in their domain names to describe an interior design style and a style of furniture and furnishings.”

The panellist said that, usually, the domain name must still be “genuinely” used for the “relied upon meaning” in order for the respondent to keep it. Because the website owner was running a legitimate business that depended on the term ‘shabby chic’, the panellist rejected the complaint.

Although Shabby Chic does not appear to have filed a similar complaint against shabbychicoriginals.co.uk, and may yet pursue the case in court, the decision may provide some encouragement for Daly.

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