The UKIPO in December 2023 rejected an opposition and held that there is no likelihood of consumer confusion regarding the below competing 3D mark and 2D logo for GR even when those marks are used on the same fashion and clothing goods.
We consider the decision and its impact for brand owners in the fashion industry especially given the ongoing difficulties associated with registering and enforcing 3D trade marks.
Gianvito Rossi S.R.L applied to register the 3D trade mark below in the UK in May 2021.
The application sought to protect a wide range of Class 18 goods including “Bags, handbags” “Leather wallets” and “Briefcases [leather goods]” as well as “Footwear” “Gloves [clothing]” and “waist belts” in Class 25.
An opposition was subsequently filed by the owner of UK trade mark registration number 801328339 for the mark GR on the basis that the application would lead to a likelihood of confusion. This pre-existing mark for GR was similarly protecting a wide range of Class 18 goods such as “Leather and imitations of leather” and “luggage” in addition to a broad range of clothing related goods in Class 25 including “belts [clothing]” “gloves [clothing]” and “clothing of leather or imitation of leather” to name a few.
The opposition proceedings were hard fought with both parties filing evidence. In July 2023, a hearing took place before the UKIPO in which both parties were professionally represented.
The UKIPO was satisfied that there was a significant overlap in the goods sought to be protected by both of the competing trade marks. For example, the applied for leather wallets were identical to the earlier wallets and the leather coin purses were identical to the earlier purses. In addition, “document cases of leather” were similar to a medium degree with “boxes made of leather.” Further, the Class 25 goods covered by the marks were “self-evidently identical” in the view of the UKIPO.
Conversely, “pouch baby carriers” were only similar to a low degree with “backsacks” and “small bags.” Regarding the marks at issue, the UKIPO noted that the applied for mark comprises a 3D image of a buckle. Despite the opponent’s protestations that when viewed from the front that the mark would be viewed as a belt buckle in the shape of ‘GR,’ the UKIPO was satisfied that this was not the case. The UKIPO deciding officer “certainly did not see ‘GR’” from the applied for mark and therefore concluded that the competing marks are visually dissimilar. Consequently, there could similarly be “no aural or conceptual similarity.”
Likelihood of confusion
The UKIPO cautioned that it is essential to keep in mind the distinctive character of the opponents GR trade mark. In the Office’s view, the more distinctive the mark, the greater the likelihood of confusion. The UKIPO also noted that confusion can be direct or indirect. Direct confusion involves the average consumer mistaking one mark for the other. Having said that, as the marks were deemed to be not similar, even where the goods are identical, confusion could not arise in this case, and the opposition failed. The UKIPO deciding officer was so certain about this lack of consumer confusion that they commented, “If I am found to be wrong and that a sufficient proportion of consumers would see the earlier mark as ‘GR’ then I still do not consider there to be a likelihood of confusion. There are such striking differences between the marks that whilst they both may be referred to as ‘GR’, the visual differences are such that confusion will not arise.”
Although the decision is arguably fact specific and may yet be appealed by the opponent, it will be welcomed by brand owners in the fashion industry who are seeking protection for 3D shape marks representing their key product offerings.
In reaching its decision on the question of consumer confusion, the UKIPO took into consideration that the average consumer of the clothing and fashion-based goods in question will predominantly be the general public. This public will pay at least a minimum degree of attention during the purchase of those goods, and they will be mindful of factors such as colour, size and fabric etc.
Brand owners who are considering filing trade mark applications for 3D shape marks in this industry should bear in mind who their relevant consumers are and the levels of attention to detail of that consumer base when preparing their applications for filing. In addition, where 3D shape marks are being evaluated and assessed for potential trade mark applications, brand owners should also keep an open mind to the possibility of applying for additional design protection for the same product designs.
For more information and expert legal advice on the impact of this decision and how best to protect your intellectual property rights, please contact a member of our award-winning Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.