Owner of MISS SIXTY mark fails to prove well-known status

Israel

In Fronsac TM SA v Iris Line Ltd (Opposition to the registration of trademark 205879, July 26 2011), the IP adjudicator has held that the registered trademark MISS SIXTY was not a bar to the registration of the stylised mark MISS SEXY for clothing due to the presence of differentiating factors.

Local company Iris Line Ltd applied for the registration of the stylised mark MISS SEXY, which included a Hebrew transliteration, for women's apparel in Class 25 of the Nice Classification:

The application was opposed by the owner of worldwide registrations for the MISS SIXTY mark. In Israel, MISS SIXTY is registered, in stylised form, for clothing, footwear and headgear in Class 25:

MISS SIXTY is also registered in Israel as a word mark in other classes for leather goods, accessories and toiletry.

The opponent argued that the mark applied for was confusingly similar to its registered mark for the same goods and, therefore, was liable to cause confusion among the public and create unfair competition. The opponent further contended that its mark was well known and, therefore, the mark applied for could not be registered due to a likelihood of confusion or association, and a risk of dilution. Finally, the opponent argued that the applicant's mark lacked distinctive character, as the word 'sexy' was common in the fashion industry and had become descriptive for women's clothing.

The applicant claimed extensive use of the mark since 2007, reaching millions of shekels in sales in 2007-2008. It argued, among other things, that:

  • the parties targeted different customers, the applicant selling to wholesalers and the opponent targeting wealthier women; and
  • the word 'sexy' was part of 11 other registrations in Class 25.

The IP adjudicator held that the opponent had failed to demonstrate that the MISS SIXTY marks were well known in Israel (because, among other reasons, the opponent's affiants had failed to attend the hearing to be interrogated and, consequently, their affidavits were accorded lesser weight). Therefore, the potential dilution of the opponent's mark was irrelevant.

The IP adjudicator further held that the marks in Class 25 were not confusingly similar under the three-fold test of confusing similarity, which examines:

  • the visual and phonetic similarity;
  • the type of goods, the type of customers and the channels of distribution; and
  • other circumstances.

The IP adjudicator concluded that the similarities between the marks were negated by the differences between them, namely:

  • the visual differences created by the graphic elements and the prominent Hebrew writing in the applicant's mark;
  • the phonetic differences;
  • the different socio-economic strata of consumers targeted by the parties; and
  • the different message conveyed by each mark.

The IP adjudicator further held that the opponent's word marks in Class 18 for leather accessories and in Class 3 for cosmetics were sufficiently close commercially to the goods for which registration was sought. However, absent proof of the well-known status of the MISS SIXTY mark, these registrations did not constitute a bar to the registration of MISS SEXY due to:

  • the phonetic and conceptual differences between the marks; and
  • the different consumers and channels of distribution.

The opponent's contention that MISS SEXY was ineligible for registration due to a lack of distinctiveness was also rejected because, among other reasons, 'sexy' was not descriptive of clothing, but suggestive at the most. Evidence of the applicant's use of the mark also weighed in favour of a finding of distinctiveness.

David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv

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