13 July 2021TrademarksAlex Baldwin

Boohoo fails to strike out ‘Boo London’ mark

Boohoo has failed to convince the UK Intellectual Property Office (IPO) that a designer’s ‘Boo London’ trademark application could be confused with Boohoo’s branding.

The UK-based online fashion retailer opposed the ‘Boo London’ application, claiming that the average consumer could associate the application with the established Boohoo brand as they both related to ‘fabrics’ under class 24 of the Trademarks Act.

As evidence, Boohoo submitted its standard typeface Boohoo trademark first registered in 2019. The contested mark consists of text and figurative components coloured gold, with an ornate stylised ‘B’ and the words ‘Boo London’ in upper case,

The applicant, Cindy-Lee Village, claimed that the only similarity between the marks is ‘Boo’ and all other elements were visually different.

She also argued that her mark was targeting an entirely separate demographic, with Boo London being a high-end fashion brand aimed at older, high net worth individuals whereas Boohoo targetted 16-25-year-olds.

The IPO ruled that this distinction did not apply, with tribunal hearing officer Emily Venables saying: “To my mind, it is self-evident that the applicant’s ‘silk fabrics’ fall within the scope of the opponent’s fabrics.”

Brand similarities

In comparing the two marks, Venables sided with Village, claiming that visually, the similarity between the two marks rested in the letters ‘Boo’, adding: “The fact that none of the remaining elements of each mark are present in the other creates multiple visual differences.”

Overall, the office found a medium degree of similarity in aural comparisons and found no degree of similarity on a conceptual level between the two marks.

Despite the similarities, the office ruled that the average consumer will notice the letters ‘hoo’ in Boohoo’s mark, which clearly distinguishes the two marks as unrelated.

Venables ruled that Boohoo’s opposition failed, saying that the ‘Boo London’ application could proceed to registration.

Case background

Village first filed an application for Boo London in January 2020 for class 24 for silk fabrics.

Following its publication, the mark was opposed by Boohoo on 24 April 2020, which filed an opposition under sections 5(2)(b), 5(3) and 5(4)(a), but failed to file evidence supporting its opposition for the latter two sections, leading the IPO to strike them out.

Under 5(2)(b), Boohoo relied on its ‘Boohoo’ trademark in class 24, first registered in May 2019, which it claimed was earlier and identical to Village’s mark which would cause confusion.

Village denied that her mark would cause confusion, leading to a hearing in May 2021, in which only Boohoo and its representative Andrew Marsden, managing associate at Wilson Gunn attended.

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