Gucci fails to prevent registration of logo for clothing

United Kingdom

The recent unsuccessful UK opposition by Guccio Gucci SpA against Luke Anthony Connelly is a pertinent reminder of the necessity to work logically through settled legal principles when assessing the merits of a potential claim and not to have biased opinions if a party happens to be a well-known entity. Further, it highlights that a strong reputation and inherent distinctiveness may not always be enough for a positive finding of likelihood of confusion or unfair advantage/detriment under Sections 5(2)(b) and 5(3) Trademarks Act 1994, respectively.

Connelly applied for his mark (figure 1 below) for “clothing” in Class 25 of the Nice Classification. Gucci subsequently opposed the application on the basis of an earlier Community trademark (figure 2 below) and an earlier UK trademark (figure 3 below), both in Classes 3, 14, 18 and 25.  

                      

                 Figure 1                                       Figure 2                                    Figure 3

Whilst Gucci filed detailed grounds of opposition and supporting evidence in relation to, among other things, enhanced distinctive character and reputation, Connelly submitted only a short three-paragraph counter-statement, the entirety of which was reproduced in the judgment. It was highlighted by the comptroller-general, CJ Bowen, that much of Gucci’s evidence was of poor quality and hard to read.

The opposition was based on both Sections 5(2)(b) and 5(3) of the act. Under 5(2)(b), a trademark shall not be registered if it is “similar to an earlier trademark and is to be registered for goods or services identical with, or similar to, those for which the earlier trademark is protected, or there exists a likelihood of confusion on the part of the public”. In relation to Section 5(3), a trademark which is identical, or similar to, an earlier trademark with a reputation shall not be registered if “the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark”.

In the judgment, the comptroller-general helpfully listed the key considerations when assessing Section 5(2)(b) allegations, as set out by various cases from the Court of Justice of the European Union. After quickly stating that the application was for identical goods to those covered by the earlier marks, there followed a discussion as to who the average consumer would be for such goods. It was highlighted that the visual aspect plays a greater role in the global assessment of likelihood of confusion and that the consumer’s attention would be a reasonable level, which would increase as the cost and importance of the item of clothing increases.

In comparing the application and the earlier marks, the comptroller-general held that they were visually similar to a very low degree and further that they held no conceptual message, oral meaning or dominant elements. It was refuted that the application and the earlier marks would be seen as two interlocking Gs, although noting that, following Mann J in Specsavers International Healthcare Ltd v Asda Stores Ltd (No 2) ([2011] FSR 1), the fact that Connelly’s mark is red does not assist in distinguishing the marks. In particular, it was considered that the application could be seen as two separate semi-circles as opposed to the two interlinking circles depicted by the earlier marks.

Although having agreed with Gucci that the earlier marks were inherently distinctive to a high degree, the comptroller-general had “no hesitation” in holding that there would be no likelihood of confusion and so the claim under Section 5(2)(b) must fail.

The opponent’s arguments under Section 5(3) were similarly unsuccessful. After summarising the basis of his assessment with reference to Opposition No O-179-11, the comptroller-general held that “the very low level of visual similarity between the competing marks is still, in my view, insufficient for any 'link' to be made in the mind of the average consumer”, even when acknowledging the earlier marks’ reputations in the United Kingdom.  

It is interesting to note that Gucci’s high-level reputation and inherent distinctiveness was not sufficient to push through neither the Section 5(2)(b) nor Section 5(3) hurdles. It is also perhaps an important reminder to parties to submit succinct arguments and carefully select evidence in the context of each case rather than “throwing in the kitchen sink” every time.

Verity Ellis, D Young & Co LLP, London

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