Decision Nº O/136/20 from Intellectual Property Office - (Trade market), 4 March 2020
| Judge | Ms C Boucher |
| Registration Number | UK00003356250 |
| Date | 04 March 2020 |
| Administrative Decision Number | O/136/20 |
O/136/20
IN THE MATTER OF TRADE MARK APPLICATION NO. 3356250 BY
M.J.W. LIPSY COUTURE LTD
TO REGISTER:
Lipsy Couture
AS A TRADE MARK IN CLASSES 5 & 10
AND
IN THE MATTER OF THE OPPOSITION THERETO
UNDER NO. 415694 BY
LIPSY LIMITED
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BACKGROUND AND PLEADINGS
1. Maxine Waugh applied to register Lipsy Couture as a trade mark in the United
Kingdom on 26 November 2018. It was accepted and published in the Trade Marks
Journal on 7 December 2018 in respect of the following goods:
Class 5
Dermal filler; injectable dermal filler; Pharmaceutical products administered by
injection for use in moisturizing skin and reducing wrinkles; Pharmaceutical
preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and
defects and conditions of the human skin; biological dermal implants, namely,
visco-supplementation solutions for filling wrinkles.
Class 10
Medical and surgical apparatus and instruments; Dermal implants;
Biocompatible materials for medical purposes for reducing wrinkles; Artificial skin
for surgical purposes; Prostheses; Apparatus for the treatment of glabellar lines,
facial wrinkles, asymmetries and defects and conditions of the human skin.
2. Ownership was assigned to M.J.W. Lipsy Couture Ltd (“the applicant”) with effect
from 1 April 2019.
3. The application was opposed by Lipsy Limited (“the opponent”) on 7 March 2019.
The opposition is based upon sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks
Act 1994 (“the Act”) and concerns all goods of the application.
4. With regards to its claim based upon section 5(2)(b) of the Act, the opponent is
relying upon UK Trade Mark No. 3266691: LIPSY (“the 691 mark”). The mark was
applied for on 27 October 2017 and registered on 23 March 2018 in respect of goods
in Classes 3, 5, 11, 14, 16, 20, 21, 24, 27 and 28. Under section 5(2)(b), the opponent
is relying on the following goods:
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Class 3
Reed diffusers; perfumery; essential oils, cosmetics, hair lotions; soaps;
dentifrices; perfumes; colognes; body sprays; toiletries; cosmetics; body and
beauty care cosmetics; toiletry products; toiletry preparations; toiletries in the
form of creams and lotions; cleansing products; preparations for body care;
preparations for care of hair; preparations for care of nails; nail varnish;
preparations for care of skin; preparations for the eyes; preparations for the face;
preparations for the feet; preparations for the hands; preparations for the nails;
colouring substances for cosmetic purposes; cosmetic kits; cosmetic masks;
deodorants; soaps; sponges impregnated with soaps/toiletries; talc; bath and
shower oils, gels, creams, lotions, milks and foams; bath beads; bath crystals;
bath salts; but not including lip salves, lip protectors and/or lip care preparations
and none of the aforesaid goods being lip related products.
5. The opponent claims that the contested mark is similar to its earlier mark, that the
applicant’s goods are similar or complementary to the opponent’s goods, and that, as
a result of this similarity, there is a likelihood of confusion, including a likelihood of
association.
6. With regards to its claim based upon section 5(3), the opponent is relying upon the
691 mark and it claims that the mark has a reputation for the Class 3 goods listed
above. The opponent is also relying upon UK Trade Mark No. 3297238: LIPSY (“the
238 mark”). This mark was applied for on 15 March 2018 and registered on 10 August
2018 for goods and services in Classes 25 and 35. The opponent claims that the mark
has a reputation for the following goods and services:
Class 25
Clothing; footwear; headgear; belts for clothing; sleep masks.
Class 35
Retail and online retail services in connection with the sale of clothing, headwear,
footwear, belts for clothing, leather clothing, passport holders, hot water bottles,
eye masks, sleep masks; retail and online retail services in connection with the
sale of perfume, cosmetics, toiletries, essential oils, hair lotions, soaps,
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