EUIPO rejects Thom Browne opposition to ‘Thom Bonzero’ trademark

Opposition Division concludes that luxury fashion brand has not acquired trademark reputation in Europe | Thom Browne had objected to mark owned by China-based company in 2022 | Distinctiveness in the EU argument fails to win over examiners.

European officials have rejected an opposition filed by Thom Browne to the trademark ‘Thom Bonzero’, concluding that the US luxury fashion company had failed to prove a likelihood of confusion with its own brand or establish a significant reputation among consumers in Europe.

Last year, the fashion brand had success in a US trademark dispute with Adidas over Thom Browne’s signature three-stripes motif.

But the February 7 decision by the Opposition Division of the EU Intellectual Property Office (EUIPO) saw Thom Browne fail in its opposition bid, with the company ordered to pay costs.

Dongguan Tinda Apparel, based in Guangdong, China, applied to register the mark ‘Thom Bonzero’ in July 2022 in Class 25 of the Nice Classification, which includes clothing, shoes and hats.

Thom Browne initiated an opposition to the trademark in October of that year on the basis of its own, earlier ‘Thom Browne’ EU trademark, invoking Article 8(1)(b) and Article 8(5) of the EU Trademark and Design guidelines and alleging that Dongguan Tinda Apparel had filed its mark in bad faith.

The EUIPO determined that the goods and services of the marks were identical, and that the degree of attention of the relevant public was average.

However, the panel of examiners said the signs were visually and aurally similar only to a low degree, disagreeing with Thom Browne that ‘Thom’ was a relatively uncommon first name, and pointing out the differences between ‘Browne’ and ‘Bonzero’ which they said would be recognised as surnames.

“The relevant public in the European Union will perceive the marks at issue as referring to different people with completely different family names,” the EUIPO said.

‘Normal’ reputation

Thom Browne also failed to convince the panel that its trademark had acquired a high degree of distinctiveness and reputation in the EU.

The Opposition Division dismissed evidence provided by the fashion company relating to its trademark use and reputation in the UK as the UK was no longer an EU member, and said that while it was clear that the company had a presence in the international fashion market, it had failed to show the recognition of its mark by end consumers.

In the absence of quantitative data such as surveys on the mark’s recognition or sales figures and invoices, it was difficult to estimate the level of exposure of the trademark to the relevant public, the panel said, concluding that the distinctiveness of ‘Thom Browne’ was therefore “normal”.

Since it had not been established that the earlier trademark had a reputation, one of the necessary conditions in Article 8(5) was not fulfilled and this opposition was also rejected.

Thom Browne was ordered to pay costs including those incurred by Dongguan Tinda Apparel in the course of proceedings.

In this trademark opposition proceeding, Thom Browne was represented by Belgium’s Van Innis & Delarue, and Dongguan Tinda Apparel was represented by Metida’s Lithuania office.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox