DUPONT registration stretches to clothing

United Kingdom

In EI Du Pont De Nemours & Company v ST Dupont, the Court of Appeal has dismissed the defendant's opposition to the registration of DUPONT.

EI Du Pont De Nemours (EIDP), a well-known US multinational operating in a wide range of scientific industries, applied to register the mark DUPONT for clothing. The application was opposed by ST Dupont - a French luxury goods company dealing in, among other things, pens, lighters, watches and clothes.

The case came before the Court of Appeal, which decided that, in relation to clothes, EIDP had the stronger rights to the DUPONT mark. It rejected ST Dupont's contention that DUPONT was not distinctive as it is a common surname in France. The court stated that what was important was whether DUPONT was capable of distinguishing the relevant goods in the United Kingdom. On the facts of the case, the court reasoned that EIDP had used the mark extensively, particularly in relation to fabrics, and it therefore had the necessary capacity to distinguish. It added that as it was clearly distinctive for fabrics, there was no reason why it was not also distinctive for clothes.

The court did take into account that DUPONT is a common surname in France when considering ST Dupont's claims of prior use. ST Dupont suggested that this prior use was sufficient to stop the registration proceeding. The court held that for non-distinctive marks, the extent and type of use would have to be greater than for inventive marks. It reasoned that ST Dupont's use was not sufficient and it could not prevent registration (nor register the mark in its own name).

The court also took the opportunity to comment on a topic that has been the subject of much debate in the United Kingdom. The debate has centred on whether an appeal should take the form of a review or a rehearing of the lower court's decision. The Court of Appeal stated that the differentiation is largely artificial as the fundamental requirement is (and always has been) that the lower court must be given appropriate respect, depending on the court and the facts of each case. It stressed that this applies equally to appeals from the Trademark Registry.

In practice, appellate courts do tend to give lower courts substantial respect. Their decisions are usually only overruled where they have applied the law incorrectly.

Ian Starr, Ashurst Morris Crisp, London

Unlock unlimited access to all WTR content