MARIE CLAIRE application rejected on grounds of bad faith and passing off

In Marie Claire Netherlands BV v Marie Claire SA, the hearing officer has upheld an opposition against the registration of the trademark MARIE CLAIRE.

Montagute Comercio e Industria de Texteis LDA applied to register the trademark MARIE CLAIRE in Class 25 of the Nice Classification (erroneously referred to in the decision as Class 32). The application was later assigned to Marie Claire Netherlands BV ('the applicant').

On advertisement, the application was opposed on both absolute and relative grounds by Marie Claire SA and Brandwell (Irl) Limited ('the opponents'), who had been using the mark in the state in relation to hosiery, lingerie and swimwear.

The applicant claimed that it was entitled to make the application by virtue of an unwritten agreement with Marie Claire Album SA, the publisher of the fashion magazine Marie Claire. This entity had previously opposed an application made by a predecessor of one of the opponents to register the mark MARIE CLAIRE in Class 25 in Ireland. Although that application for registration was ultimately unsuccessful, the hearing officer in that opposition had held that the true proprietor of the mark in Ireland was, in fact, another predecessor of one of the opponents.

With regard to the absolute grounds for refusal, given the previous decision referred to above, it was claimed that the applicant knew that it was not the proprietor of the trademark MARIE CLAIRE in Ireland in relation to the goods applied for. It was also contended that the application had been filed specifically to prevent the opponents from registering the mark in Class 25 in the future and that the applicant had no intention of actually using the mark.

The magazine publishers had licensed the mark for use on clothing in other jurisdictions, but the hearing officer dismissed the argument that a similar licence had been granted in Ireland on the basis that you could not grant a licence for use of a trademark on clothing in Ireland if you did not actually own that mark in relation to clothing in Ireland. Magazines were not similar enough to clothing for the publishers to own the mark in relation to these goods in Ireland.

While the hearing officer was satisfied that the applicant may have intended to use the mark in the future, he noted that the applicant was not trading in the goods in question in Ireland when it applied for registration. Seeking to register the mark specifically to prevent the opponents from doing so did not constitute a “legitimate commercial practice” (as the applicant had argued) and fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area being examined, which both sides had accepted was the test for bad faith.

The hearing officer stated as follows:

“Competition is good for consumers. Oftentimes a new business will open up extremely close to an existing similar business. One can open up a fast-food restaurant next door to a McDonald's, but what is not acceptable is to do so and then trade under the MCDONALD'S trademark. The applicant’s argument that the opponent’s failure to protect their trademark, by applying for registration, is justification for their application does not hold much weight. There is no requirement to register a trademark in order to establish rights in it… just because someone does not protect their bicycle by locking it to the railings does not mean that someone else is entitled to come along and use it”.

Accordingly, the application was held to have been made in bad faith.

With regard to the relative grounds for refusal, the hearing officer was also satisfied that the ingredients for passing off were present and that the application was liable to be prevented under this ground. Accordingly, the opposition was also upheld on this ground.

Ciaran O’Neill, DFMG Solicitors, Dublin