15 January 2020TrademarksSarah Morgan

Tiffany victorious over namesake beautician at UKIPO

The UK Intellectual Property Office (IPO) has sided with jewellery retailer Tiffany & Co and agreed to halt the registration of a beautician’s trademark.

Back in April 2018, Tiffany Parmar applied to register ‘Cotswold Lashes by Tiffany’, covering class 3 (cosmetics); class 41 (education and beauty school services); and class 44 (hygienic and beauty care).

Later that year, Tiffany opposed the trademark application, citing its numerous ‘Tiffany’ UK and EU trademarks in opposition.

In response, Parmar put Tiffany to proof of use in respect of both UK marks for the registered specifications in class 14, which includes jewellery.

Beauty therapist Parmar argued that she started working under the name Beauty by Tiffany in 2014, offering a range of beauty treatments. In 2015 she decided to concentrate on eyelash treatments and altered her trading name to Lashes by Tiffany. She subsequently altered the business name to Cotswold Lashes by Tiffany.

In its decision, issued on January 8, the IPO found that most of the goods covered by the applied-for trademark and Tiffany’s trademarks were identical, apart from the goods covered by class 44 of Parmar’s trademark application which had a low degree of similarity.

George Salthouse of the IPO concluded that the trademarks were visually and aurally similar to a low degree, with a medium degree of conceptual similarity.

“The figures provided are respectable but not remarkable particularly given the huge range of goods and services for which its marks are registered. As such [Tiffany] cannot benefit from an enhanced degree of distinctiveness through use in relation to the goods and services for which it is registered,” said the IPO.

However, the IPO added that allowing for the concept of imperfect recollection, there is a likelihood of consumers being confused, directly or indirectly, into believing that the goods and services provided by Parmar are linked to Tiffany.

The jewellery chain didn’t succeed in convincing the IPO that its trademarks enjoyed a reputation or public recognition.

Salthouse noted that Tiffany had provided turnover figures which relate to the two marks ‘Tiffany’ and ‘Tiffany & Co’ and which are registered for a vast range of goods and services, but had decided not to provide details solely of its jewellery sales or any of the other areas that Tiffany highlighted in its evidence.

“It was claimed in the evidence that the mark is a ‘lifestyle brand to which people aspire to and dream of as a way of life’ yet the opponent’s registration in class 3 for instance covers ‘cleaning, polishing, scouring and abrasive preparations’. As this would include items such as drain un-blockers and toilet cleaners this hardly fits with the luxury lifestyle image spoken of by the opponent,” said Salthouse.

Parmar was ordered to pay Tiffany & Company £1,000 ($1,300) as a contribution towards costs.

Back in October 2018, WIPR reported that Parmar had said she would defend her rights against Tiffany.

At the time, she tweeted: “As a very small business I’m so saddened to see that you [Tiffany] found it necessary to go after me so aggressively for trying to do things the correct way and trademark my company name.”

In a post published after the decision, Parmar said: “When this first happened to me, I reacted emotionally and personally. However, after a little research I realised it wasn't at all personal.

“The exciting thing about this case is that a win would have seen a potential change in trademark law which would benefit small business.”

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More on this story

15 October 2018   A beautician in the UK has said she will defend her rights after being allegedly threatened with a trademark opposition by Tiffany & Co against an application.
8 June 2020   A Thailand-based jeweller has accused Tiffany & Co of infringing its colour-changing stone-setting patent in a lawsuit filed late last week.