ELLE for knitting yarns approved by High Court
In Hachette Filipacchi Presse SA v Saprotex International (Proprietary) Limited, the Chancery Division of the High Court of England and Wales has dismissed an appeal by the publisher of Elle magazine against the registration of the trademark ELLE in relation to knitting wools and yarns. The case affirms that if there is no similarity between the products confusion between the marks at issue is unlikely.
Hachette Filipacchi Presse SA (HFP) is the publisher and distributor of Elle magazine, a well-known fashion and lifestyle magazine for women, and the registered proprietor of the mark. The ELLE mark is registered in respect of periodicals relating to women and women's clothing and is also used for selling fashion and other goods. Knitting patterns have been published in both the UK and French editions of Elle magazine as recently as 2001.
Saprotex International (Proprietary) Limited (SIP) is a manufacturer of hand-knitting yarns which are widely distributed to South Africa, Australia, New Zealand, the United States and the United Kingdom. SIP sought to register the mark ELLE for knitting wool and yarn but its application was opposed by HFP. The opposition was dismissed by the hearing officer at the UK Patent Office and HFP appealed.
On appeal, the court found that the hearing officer had not made any mistake in his assessment of the distinctive character of HFP's mark and the degree of likely association between the marks. It held that the average consumer for knitting wool and yarn is "a mother or grandmother [of between 50 and 60 years old] knitting for her children or grandchildren"; while the magazine is for the "independent and working woman having disposable income".
Therefore, the target consumers of the magazine differed from the likely consumers of knitting wool and yarn, with the average purchaser of knitting wool being unlikely to purchase Elle magazine. If there was any association or confusion in the minds of consumers, it would be only marginal. Since the association between the two marks was not strong enough, it was hard to find any conclusion of unfair advantage that SIP might take from HFP's mark. Secondly, there was no recognizable degree of similarity between the goods; they had different uses, well-separated trade channels and distribution processes, and neither was complementary to or in competition with the other. HFP's appeal was therefore dismissed.
Amanda Easey, McDermott Will & Emery UK LLP, London
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