UKIPO sides with Dickies manufacturer in TM opposition
The UK Intellectual Property Office ( IPO) has sided with the manufacturer of clothing brand Dickies in a trademark dispute.
In a decision on Thursday, May 23, the IPO said an individual, Ibrahim Sesay, could not register a design mark because it would be confused with one of W-D Apparel’s earlier marks.
In March 2018, Sesay had applied to register the design mark for the head of a bear, with the Spanish words ‘Respetar Al Niño’ written underneath for goods including clothing, footwear and headgear.
This was opposed by the maker of Dickies, which said it would infringe its earlier trademark, also depicting a bear, with the word ‘Kodiak’ written underneath. The earlier mark was registered for identical goods.
The IPO said that conceptually, the marks were identical, finding that the “dominant and distinctive element” of both marks is a bear’s snarling head, showing its teeth in an aggressive manner.
It said W-D Apprel’s mark has the word ‘Koda’ underneath it, but “given that this is the name of the Alaskan brown bear it would be seen are merely reinforcing the bear motif”.
Additionally, it said consumers in the UK are not likely to understand the meaning of the Spanish word element in the applied-for mark, which will as a result, “be overlooked by consumers”.
It also said that given the goods sold by the two parties are in identical classes, it is “entirely possible that a consumer would simply believe” that the applied-for mark was an “updated” version of W-D Apparel’s earlier mark.
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