Global apparel company successfully prevents registration of marks for clothing

Romania

Lucy Apparel LLC, a division of VF Corporation (a well-known global apparel and footwear company) obtained four positive decisions before the Romanian Trademark Office (OSIM) on January 25 2015. The decisions were summoned to Lucy Apparel on March 10 2015.

A Romanian company filed for the registration of four variations of the LUCY trademark for, among other things, "stockings, tights, underclothes, socks" in Class 25 of the Nice Classification.

The four variations of the LUCY trademark were as follows:

 

Lucy Apparel filed oppositions against the trademark applications based on its national trademark LUCY (No 107086), registered for "clothes, namely tops (short blouses), t-shirts without sleeves, t-shirts, shorts, jackets, vests, underclothes, namely shirts, body suits, undergarments, tights (ballet pants) and leggings, underclothes (body suits) for cold weather, skirts, dresses, swimming suits, items to wear over a swimming suit, bras, underclothes, hats, gloves, wristbands and headbands" in Class 25.

Lucy Apparel's arguments were based mainly on the following:

  • the trademarks were similar from a visual, phonetic and aural point of view, and covered similar and related products; and
  • there was a risk of confusion, which included a risk of association among consumers.

Based on the arguments brought before it, OSIM issued a final decision in favour of Lucy Apparel. The registration of the LUCY marks was rejected for all the goods in Class 25 covered by the applications.

Arguably, the decision of OSIM is well-grounded and of importance, not only for Lucy Apparel, but also as a precedent. In this respect, it is expected that OSIM will take this decision into account in future similar cases.

Dr Andra Musatescu, Andra Musatescu Law & Industrial Property Offices, Bucharest

Andra Musatescu Law & Industrial Property Offices represented Lucy Apparel LLC in this case

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