Clarks loses TM opposition against children’s outfitters
UK shoe company C & J Clark has failed to convince the UK Intellectual Property Office to block luxury children’s clothing company Clark & Beau from trademarking its logo.
C & J Clark filed an opposition to the trademark application in February 2020, claiming the application relied upon four existing ‘Clarks’ marks and that there would be a likelihood of confusion between the companies.
In its counterclaim, Clark & Beau argued that ‘Clark’ is an “extremely common name” and that the company was also undergoing a rebrand in which it planned a rename.
The comptroller-general Karol Thomas agreed partly, saying in the decision published on June 21: “In a sector where names (forenames and/or surnames) are prevalent to denote the origin of the goods, the average consumer will not put the similarity between the marks arising from a common name down to an economic connection.”
However, she did not address the rebranding argument as the comparison was for the applied mark, which included the ‘Clark’ name.
The Clark & Beau trademark will be registered for casual clothing in Class 25.
Potential confusion
In his analysis, Thomas decided that the marks were visually similar to a low degree, aurally similar to a medium degree and that the C & J mark was distinctive only to a medium degree, but enhanced by the brand’s recognition.
Regarding the possibility of indirect confusion, the inclusion of “& Beau” in the mark provides heightened distinctiveness according to Thomas, who clarified: “Even though the marks coincide in the element ‘Clark’, the words ‘Clark & Beau’ are unlikely to lead the average consumer to think that the goods emanate from the same or linked family business.”
C & J Clark also failed to convince the court that Clark & Beau’s mark would take an unfair advantage of existing C & J Clark’s marks under Section 5(3), with Thomas again claiming that names in clothing branding possess only “a limited inherent distinctive character”.
Thomas concluded: “I am not convinced that there is a misrepresentation leading to deception or a likelihood of deception as to the trade origin of the goods offered.
“Even though the goods are similar to a medium degree, the distance between the competing trademarks is such that the use of the contested mark is not likely to deceive a substantial number of the opponent’s customers or potential customers.”
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