Tommy Hilfiger bins Tommy Heritage at UKIPO
The UK Intellectual Property Office (IPO) has refused to register the trademark ‘Tommy Heritage’ after an opposition by clothing brand Tommy Hilfiger.
The IPO, which handed down its decision on Friday, February 16, also awarded Tommy Hilfiger £800 ($1,121) in damages.
China-based Ou Dahan applied for the ‘Tommy Heritage’ mark in December 2016 to cover class 25 (clothing).
Soon after publication of the mark, Tommy Hilfiger opposed it, claiming that the respective trademarks and goods are identical or highly similar and that a likelihood of confusion exists.
Tommy Hilfiger also claimed that use of the ‘Tommy Heritage’ mark will lead to “unfair advantage, detriment to repute and distinctive character and also to misrepresentation and damage”.
The clothing brand based its opposition on three earlier marks, one being ‘Tommy’ (UK number 2,292,693), which covers class 25.
Mark Bryant, on behalf of the IPO, limited his assessment to the likelihood of confusion with the ‘Tommy’ mark.
According to Bryant, the respective specifications of the goods contain the identical term ‘clothing’, and the specification of Dahan’s shoes is covered by Tommy Hilfiger’s “broad term” of footwear.
“In summary, the respective goods are either self-evidently identical or that, when applying the guidance of the EU General Court in Gérard Meric v Office for Harmonisation in the Internal Market, the applicant’s specific goods are covered by the opponent’s broad terms,” said Bryant.
He found that the marks had a medium level of visual and aural similarity.
On conceptual similarity, Bryant noted that the opponent’s mark consists of the male forename ‘Tommy’, while Dahan’s mark consists of the same forename plus the word ‘Heritage’.
Heritage will be perceived in one of two ways, according to the IPO.
Because Heritage appears directly after a forename, it may be perceived by some as a surname.
“However, there is nothing before me to suggest that it is a common surname, or that it will be readily perceived as a surname,” said Bryant.
The second option is that Heritage is an “ordinary and commonly understood dictionary word meaning valued objects passed down from previous generations” and can be used to indicate “a traditional brand or product regarded as emblematic of fine craftsmanship”.
Bryant said it is likely that the average consumer will perceive this meaning and believe that the mark will cover a heritage range of clothes originating from somebody called, or a company identified by, Tommy.
If a consumer perceives the word as the former meaning, the ‘Tommy Heritage’ mark will have a medium level of conceptual similarity, said Bryant.
He explained that where the second meaning is perceived, the marks will share a higher level of similarity.
“Consequently, there is a real likelihood of confusion where average consumers will merely perceive the applicant’s mark as indicating a heritage range of clothes that originate from the same or linked undertaking as goods provided under the opponent’s mark.”
Tommy Hilfiger’s opposition was successful and the application for ‘Tommy Heritage’ was refused.
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