Decision Nº O/025/22 from Intellectual Property Office - (Trade market), 13 January 2022
| Judge | Mrs T Perks |
| Date | 13 January 2022 |
| Administrative Decision Number | O/025/22 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003515167 |
O/025/22
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. 3515167
BY DEBONAIR TRADING INTERNACIONAL LIMITADA
TO REGISTER THE TRADE MARK
AOURA
IN CLASS 3
AND
IN THE MATTER OF OPPOSITION THERETO UNDER NO. 422267
BY LOEWE S.A.
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BACKGROUND AND PLEADINGS
1. On 23 July 2020 Debonair Trading Internacional Limitada (“the applicant”) applied
to register the trade mark shown on the cover page of this decision in the UK. The
application was published for opposition purposes on 28 August 2020 and registration
is sought for the following goods:
Class 3: Perfumery; eau de toilette; body mists; perfumed body spray; body
creams; body lotions; body butters; shower gels; bubble bath; bath foam.
2. On 30 November 2020 Loewe S.A. (“the opponent”) opposed the application on the
basis of Sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (“the Act”).
Under Sections 5(2)(b) and 5(3) of the Act the opponent relies upon the following
European Union Trade Mark (EUTM):1
EU000357640
AURA LOEWE
Filing date: 10 September 1996
Registration date: 25 February 1999
3. The mark is registered for a range of goods in class 3, namely Soaps; perfumery,
essential oils, cosmetics, hair lotions; dentifrices but the opponent relies only on
perfumery.
4. Under Section 5(2)(b), the opponent claims that the contested goods are identical
or similar to those covered by the earlier mark, although it did not comment on the
similarity of the marks.
5. Under Section 5(3) of the Act, the opponent claims that it has established a
substantial goodwill and reputation in connection with its earlier mark and that use of
1 By virtue of the transitional provisions set out in paragraph 7( 1) of Schedule 5 to the Trade Marks (Amendment
etc.) (EU Exit) Regulations made pursuant to the European Union (Withdrawal) Act 201 8, earlier EU trade marks
filed before 31 December 2020 continue to constitute relevant earli er trade marks for the purposes of Sections 5
and 6 of the Trade Marks Act 1994 (“the Act”). Therefore, the opponent can continue to rely on the earli er EU mark
notwithstanding the UK’s exit from the EU.
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the contested mark would result in the applicant taking unfair advantage of the
opponent’s reputation and causing detriment to the reputation and distinctive character
of the earlier mark.
6. Given its filing date, the opponent’s mark qualifies as an earlier mark in accordance
with Section 6 of the Act. As the mark had completed its registration procedure more
than five years before the date the application was filed, it is, as a consequence,
subject to the proof of use provisions contained in Section 6A of the Act.
7. Under Section 5(4)(a), the opponent claims to have used the signs AURA
throughout the UK since 2013 in relation to perfumery, perfumes and fragrances.
8. The applicant filed a counterstatement denying the grounds of opposition. It also
indicated that it would require the opponent to provide proof of use of the earlier mark.
9. Both parties filed evidence during the evidence rounds. The opponent also filed
evidence in reply. I shall refer to the evidence to the extent I consider necessary.
10. The applicant is represented by Beck Greener LLP. The opponent is represented
by D. Young & Co. A hearing took place on 5 November 2021 via videoconference.
The applicant was represented by Mr Kashif Syed of Beck Greener LLP. The opponent
elected not to attend the hearing, but it filed written submissions in lieu.
11. Although the UK has left the EU, Section 6(3)(a) of the European Union
(Withdrawal) Act 2018 requires tribunals to apply EU-derived national law in
accordance with EU law as it stood at the end of the transition period. The provisions
of the Trade Marks Act relied on in these proceedings are derived from an EU
Directive. This is why this decision continues to make reference to the trade mark case
law of EU courts.
THE EVIDENCE
12. The opponent filed evidence in the form of two witness statements of Juan Pedro
Abeniacar. Mr Abeniacar is the opponent’s CEO. The first of Mr Abeniacar’s witness
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