3 September 2018Trademarks

UKIPO upholds D&G’s paper clothing TM opposition

Italian fashion brand Dolce & Gabbana (D&G) has successfully opposed the registration of a UK trademark covering paper clothing.

Heather Harrison, for the UK Intellectual Property Office (IPO), made the decision on Friday, August 31.

An entity called Cherry and Jerry filed to register ‘DG Fashion’ as a trademark in 2016, covering a range of goods in class 25. Separate opposition proceedings resulted in the partial refusal of the application, leaving the applied-for mark covering paper aprons and paper clothing.

D&G opposed the registration of the mark, and relied on its earlier-registered trademarks including a European mark for ‘D&G’ (452,359), registered in 1999, and an international registration in the UK for ‘DG’ (845,608), registered in 2005.

Both marks are registered in classes 3, 9, 18, and 25, covering cosmetics, glasses, accessories, clothing, and leather goods.

D&G said its marks have a reputation in the UK and the registration of the applied-for mark would cause the public to wrongly believe that a connection between D&G and Cherry exists.

At least €1.5 million ($1.74 million) is spent on advertising and marketing the D&G brand in the UK every year, according to D&G, and by using the ‘DG Fashion’ mark, Cherry would gain an unfair advantage by free-riding on the reputation that D&G has developed.

The fashion brand also claimed that its marks are associated with a high quality of goods, and a link with the poor-quality goods produced by Cherry would damage D&G’s reputation and dilute its trademarks.

In response, Cherry said its products and brand are in “no way similar” to those of D&G, and explained that the applied-for mark stands for “Deal on Goods Fashion”.

Harrison said D&G’s evidence of goodwill is “anything but compelling”, as it lacked specificity surrounding the type of goods sold under the asserted marks within the relevant dates. However, she conceded that the evidence produced did show ‘DG’ letters to be an important part of the brand’s identifying labels.

Although D&G does not produce paper clothing, Harrison said the goods covered by Cherry’s applied-for mark “clearly fall within the same field of activity” as that of the fashion brand, even though Cherry said it does not intend to manufacture high-end clothing.

The ‘DG Fashion’ mark is high similar, visually and aurally, to the marks asserted by G&D, she added, and is similarly dominated by the identical element ‘DG’.

“That element has no clear conceptual meaning and it would certainly not be perceived as ‘Deal on Goods Fashion’,” she said.

As Cherry sought to use a highly similar mark as D&G’s own marks in the same field of activity, Harrison said that damage to the fashion brand’s business through diversion of sales and loss of reputational control is “easily foreseeable”.

She upheld D&G’s opposition on this basis, without considering its other grounds of opposition, and ordered Cherry to pay £1,000 ($1,289) towards the fashion brand’s costs.

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