G-Star loses fight for ELWOOD mark
In G-Star International v Wheelie Den Distribution LLC (Case 670-1742/01-AC), the Slovenian Intellectual Property Office (SIPO) has rejected G-Star International's opposition to the registration of the mark ELWOOD and design. The SIPO held that (i) G-Star's international registration for ELWOOD was not well known in Slovenia, and (ii) its Slovenian registration was not valid at the time of Wheelie Den Distribution's (WDD) application.
WDD filed a trademark application with the SIPO for the mark ELWOOD and design covering Classes 9, 25, and 28 of the Nice Classification on November 16 2001. G-Star opposed the application claiming that its international trademark ELWOOD covering Class 25 was well known in Slovenia at the time of WDD's application. WDD responded to the opposition stating that G-Star had failed to prove that its mark was well known. WDD noted that it has been using its ELWOOD mark since 1996 and suggested that it is more widely known in Slovenia than G-Star's mark.
The SIPO refused the opposition and allowed WDD's mark to progress to registration. It held that G-Star's international registration for ELWOOD was not well known in Slovenia as it had only provided evidence that it had sold 43 ELWOOD-marked pieces of clothing in Slovenia in 1997. It dismissed further evidence showing that G-Star's trademark is regularly advertised in foreign magazines because it doubted that these magazines are available to Slovenian consumers.
The SIPO also found that G-Star could not rely on its Slovenian registration for ELWOOD as this only became valid on August 1 2002, several months after WDD's application.
Gregor Macek, ITEM doo, Ljubljana
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