Trade mark decision

BL Number
Decision date
5 April 2002
Hearing Officer
Mr G Salthouse
Tommy Hilfiger Licensing Inc
Etam Public Limited Company
Sections 5(2)(b), 5(3) & 5(4)(a)


Section 5(2)(b) - Opposition failed

Section 5(3) Opposition failed

Sections 5(4)(a) - Opposition failed

Points Of Interest

  • None


The opponents opposition was based on their ownership of a number of registrations, in particular TAMMY in Class 3 in respect of the same and similar goods as those of the applicant, and TAMMY and TAMMY GIRL in Class 25 in respect of articles of clothing. The opponents also filed significant use of their mark TAMMY in respect of articles of clothing for girls in the 9-15 age group.

The applicants also filed evidence of use of their TOMMY GIRL mark but all the claimed use was after the relevant date of 15 October, 1996. Survey evidence filed by the applicants was rejected by the Hearing Officer as significantly flawed.

Under Section 5(2)(b) the Hearing Officer noted that in respect of the opponents Class 3 registration, similar and identical goods were at issue. He also compared the opponents Class 25 clothing goods with the applicants Class 3 cosmetics and toilet preparations and concluded that they were not similar. The Hearing Officer then compared the respective marks TOMMY GIRL with TAMMY and TAMMY GIRL. He decided that they were visually and phonetically different and that as TOMMY was a well known male forename and TAMMY a well known female forename, there was no likelihood of confusion between the respective marks. Opposition failed on this ground.

Under Section 5(3) the Hearing Officer noted the opponents’ reputation in their mark TAMMY in respect of different goods to those of the applicants. However, he considered that the conjoining of a male forename with the word GIRL produced a distinctive mark and he did not consider that use of the applicant’s mark would cause detriment to the distinctive character of the opponents mark. Neither did he think there would be any likelihood of association or blurring. Opposition thus failed on this ground.

The Section 5(4)(a) ground - Passing Off - was dealt with only briefly. As the Hearing Officer had already concluded under Section 5(2)(b) that the respective marks were not confusingly similar, he decided that there could not be any misrepresentation. Opposition thus failed on this ground.

Full decision O/158/02 PDF document69Kb