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Trade mark decision

BL Number
O/135/04
Decision date
14 May 2004
Hearing officer
Mr M Reynolds
Mark
TOMMY
Classes
14
Applicant
Tommy Hilfiger Licensing Inc
Opponent
Etam Plc
Opposition
Sections 5(2)(b); 5(3) & 5(4)(a)

Result

Section 5(2)(b): - Opposition failed.

Section 5(3): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest

  • Comparison of the marks TAMMY v TOMMY

Summary

The opposition was based on the opponents’ use and registrations of their mark TAMMY, in various formats and a number of classes. The Hearing Officer did not accept that the goods specified in the majority of these classes were similar, and he directed his analysis under Section 5(2)(b) to the opponents’ registration No 2222627 in Class 14. this was in respect of goods identical with or closely similar to the applicants’ specifications. Comparing the marks the Hearing Officer noted the obvious points of similarity. However, he stated, it was the difference between male and female forenames which was at the heart of this issue. He also recognised that normal and fair use could include use in a number of different formats and typefaces. On a global appreciation, however, taking all relevant factors into account, the Hearing Officer did not find a likelihood of confusion and the opposition under Section 5(2)(b) failed accordingly.

Under Section 5(3) the Hearing Officer having found no likelihood of confusion in respect of similar goods could not accept a case for detriment in relation to goods that were not similar “in the absence of persuasive reasons as to why this should be so”. The opponents had not made a persuasive case and the opposition failed on this ground also.

Under Section 5(4)(a) the Hearing Officer could see no basis for a finding of misrepresentation when the opponents had failed to establish a likelihood of confusion. The opponents’ acquisition of the mark TOMMY BOY (mentioned in the evidence but not in the pleadings) did not change the overall situation. The opposition failed on this ground too.

Full decision O/135/04 PDF document60Kb