'Clothing' is fair description of ANIMAL goods

United Kingdom

In H Young (Operations) Limited v Medici Limited, the UK High Court has refused the defendant's claim for partial revocation of the mark ANIMAL. It also ruled that the plaintiff's use of the term 'clothing' as a specification of goods covered by the mark is a fair description, not requiring qualification in any way, despite the fact that use of the mark was confined to surfwear of a casual type.

H Young, a UK clothing company, brought an action against Medici for infringement of its registered trademark ANIMAL and for passing off. Medici counterclaimed for partial revocation of the mark on the grounds of non-use.

The ANIMAL mark covers a range of goods, including "clothing, footwear, headgear, baseball caps, sweatshirts and t-shirts" under Class 25 of the Nice Classification. However, H Young has only ever used the mark for clothing that has a surfing connection. Medici's main target market is the middle-aged and older woman, particularly one looking for a dress or an outfit for a special occasion. It uses the trademark ANIMALE.

Medici sought partial revocation in relation to, among other things, the Class 25 specification on the grounds of non-use. It submitted that although H Young had proved the use of the trademark in connection with a range of garments during the relevant five-year period, all the goods were aimed at consumers who wanted a certain surfer image. Medici also submitted that "the specification should be limited to the itemized specific goods with the qualification that they all be 'casual surf type wear for men' or 'casual surf type wear for women aged under 30'".

The court highlighted that the principle for deciding on a partial revocation is what an average consumer would consider to be a fair description for the products upon which the mark has been used. Anything falling within this fair description can be protected. In the case at hand, the court held that the term 'clothing' is a fair description of H Young's goods. The court refused to accept the arguments that the specification for 'clothing' covered by ANIMAL should be limited (i) solely to the image of the goods, or (ii) only to younger adults. It reasoned that ordinary consumers were likely to own both casual and formal wear and both parties' goods could easily be bought by the same consumer.

The court therefore upheld H Young's infringement action and dismissed, for the most part, Medici's revocation claim.

Darren Olivier, Field Fisher Waterhouse, London

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