Clarks stamps out trademark at UKIPO
Shoe maker Clarks has succeeded in its opposition to a ‘Clark’ trademark at the UK Intellectual Property Office (IPO).
The IPO issued its decision on Thursday, February 22, ordering trademark applicant Satish Murgai to pay Clarks £2,400 ($3,370).
In November 2015, Murgai applied to register the mark ‘Clark’ in class 25, for clothing and headwear. The mark was published for opposition in February 2016.
Four months later, in June 2016, C & J Clark International (the opponent and owner of Clarks) opposed the mark, based on a number of marks featuring the word ‘Clarks’ covering class 25. The opposition was later limited to three marks.
Clarks alleged it has a substantial reputation as it has used the marks since 1927, that it sells 50 million pairs of shoes worldwide each year, operates 1,300 shops globally and employs 15,000 people.
Murgai hit back, claiming that although Clarks is “renowned for its business in footwear in the UK”, the shoe maker hasn’t used its marks on clothing or headwear. The applicant asked Clarks to prove use of its marks.
The applicant contended that it has used the ‘Clark’ mark on clothing and headgear since 1977 and that the marks have co-existed without confusion.
“It also refers to a decision of the Registry (O-088-16) which it contends established that the applicant had common law rights sufficient to prevent the opponent from registering the mark ‘Clarks England’ in relation to clothing,” said George Salthouse, on behalf of the IPO.
Murgai argued that the opposition is an “abuse of process, vexatious and malicious and not filed in good faith”.
Salthouse found that for goods such as clothing, footwear and headgear, the average consumer will be the public at large and that they are likely to pay a medium degree of attention to the selection.
“Overall, all three of the opponent’s marks are visually, aurally and conceptually highly similar to the mark in suit,” concluded Salthouse, adding that Clarks benefits from enhanced distinctiveness to a high level in relation to footwear because of the use of its marks.
He concluded that there is likelihood of consumers being confused into believing that goods covered by the applied-for mark are provided by Clarks or some undertaking linked to it.
Murgai’s defence of honest concurrent use “falls at the first hurdle”.
Salthouse said: “I note that the applicant was unable to provide sufficient proof of use of its registered marks to prevent them being revoked.”
The IPO also accepted Clarks’ argument that use of the applied-for mark would result in injury to its marks.
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