23 November 2018Trademarks

Superdry bags trademark victory at UKIPO

UK fashion brand Superdry yesterday bagged victory in trademark opposition proceedings in the UK.

George Salthouse delivered the UK Intellectual Property Office’s (IPO) decision, according to a copy of the ruling seen by WIPR.

Last year, DKH Retail (Superdry) filed to register ‘Windyachter’, ‘Windtrekker’, and ‘Windattacker’ as trademarks at the IPO. Superdry also sought to register a series of two trademarks, ‘Wind Hybrid’ and ‘Windhybrid’.

Superdry wanted the marks to be registered in class 25, covering a range of goods such as sportswear, clothing, and footwear.

However, German sportswear brand Wind Sportswear filed an opposition to the marks’ registration.

Wind owns an EU trademark (EUTM) for ‘Wind’ (11,901,162), filed in 2013, which covers leather goods, bags, and accessories in class 18, and advertising and retail services in class 35.

In its opposition, the German brand relied on three other EUTMs, including figurative marks, all of which contain the word ‘Wind’ and cover some or all of the services that the ‘162 mark covers.

Salthouse said that, initially, Wind had relied on 15 trademarks, though this number was reduced in the lead up to the proceedings.

Wind claimed that its marks are very similar to Superdry’s applied-for marks.
In response, Superdry filed a counterstatement pointing out the differences between the marks. Superdry also claimed that ‘wind’, when used on outerwear, is of “little distinctive character as it is widely used to indicate that a garment is wind proof”.

At the IPO, Wind submitted copies of advertising material and items of clothing bearing the marks.

Wind also filed evidence of turnover, but Salthouse said it is “unclear what marks the figures for turnover and advertising relate to”.

Salthouse noted that the figures appear to relate to all 15 marks originally relied on by the German brand, and that for the proceedings, Wind “simply provided evidence as if the marks were all the same mark and that use of any one of the marks would count as use of any of the remainder”.

Wind does not have “a single mark which appears in each trademark as part of the overall mark, nor can they be considered marks which are different but without affecting the distinctive character”, Salthouse said.

Considering the likelihood of confusion between the applied-for marks and Wind’s marks, Salthouse found that Superdry’s ‘Windyachter’ and ‘Windtrekker’ marks are visually, phonetically, and conceptually similar to the ‘Wind’ mark.

Salthouse agreed with Superdry’s assertion that ‘wind’ is not distinctive when used in relation to outerwear as it describes the qualities and characteristics of the products, and Wind had not proved that its marks should enjoy enhanced distinctiveness.

Overall, Salthouse said that the differences between the brands’ marks outweigh the similarities, and there is no likelihood of confusion.

The IPO ordered Wind to pay Superdry £5,800 ($7,447) towards its costs, as Superdry had requested costs above a “normal scale”.

Superdry claimed that Wind’s behaviour during the dispute was “unreasonable” by, for example, seeking to rely on many rights but reducing these to four trademarks two days before the hearing.

Although Salthouse said that he would not award “off the scale costs”, he issued fees “towards the top end permissible”.

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