As this application was proceeding in Part B of the Register the Section 9 ground was irrelevant and was dismissed by the Hearing Officer.
As regards the Section 10 ground the opponents filed evidence from Scottish Telephone Directories to show that ABERCROMBIE was a relatively common surname in Scotland in that it appeared 58 times in the Glasgow Telephone Directory. As this figure was higher than that used in the guidelines applied in the case of surname marks, the Hearing Officer found that the opponents were successful in their opposition to the ABERCROMBIE mark.
As the opponents had provided no information about the FITCH element of the combined mark ABERCROMBIE and FITCH the Hearing Officer indicated that if the applicants entered a disclaimer in respect of the ABERCROMBIE element of the mark, these two applications would be allowed to proceed in Part B of the Register and opposition would fail.
As regards the grounds under Sections 11 and 12 of the Act the opponents’ opposition was based on their ownership of registrations in Classes 24 and 25 for the mark CROMBIE and they also provided details of an extensive reputation and use of this mark in relation to the manufacture and sale of high quality woollen clothes.
Under Section 12 the Hearing Officer determined that the applicants goods in Class 25 were identical to the opponents goods in the same Class and there was a similarity of goods and services in relation to the applicants Class 42 application where design services were included. The Hearing Officer then compared the opponents’ CROMBIE mark with the applicants marks. In relation to the ABERCROMBIE mark the Hearing Officer noted that the opponents mark was contained therein and that there was some visual similarity. However, he considered the respective marks to be quite different and did not believe that the public would associate them in any way. It followed that there would be no confusion with the applicants ABERCROMBIE and FITCH mark. Opposition failed on the Section 12 ground.
Under Section 11 the Hearing accepted that the opponents had a reputation in their mark. However, he considered the respective marks to be so dissimilar that there was no likelihood of deception and confusion of the public if the applicants used their mark. Opposition failed on the Section 11 ground.
Judges:
Mr M Knight
Citations:
[2000] UKIntelP o04100, O/041/00
Links:
Citing:
See Also – Abercrombie Fitch (Trade Mark: Opposition) IPO 14-Feb-2000
IPO The Section 3(3)(b) and 3(6) grounds were dismissed by the Hearing Officer, as no evidence in support of them was put forward. Reviewing the law and practice in relation to surnames the Hearing Officer . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 12 October 2022; Ref: scu.453716