Decision Nº O/195/08 from Intellectual Property Office - (Trade market), 7 July 2008
| Judge | Mr D Landau |
| Case Outcome | Section 3(6): Opposition successful. Section 5(4)(a): Opposition successful. |
| Registration Number | UK00002403678 |
| Administrative Decision Number | O/195/08 |
| Date | 07 July 2008 |
| Court | Intellectual Property Office (United Kingdom) |
O-195-08
IN THE MATTER OF APPLICATION NO 2403678
BY ARBRE GROUP LLC
TO REGISTER THE TRADE MARK:
IN CLASS 25
AND
THE OPPOSITION THERETO
UNDER NO 94795
BY WORN BY (ORIGINAL ICON CLOTHING) LLP
2 of 21
In the matter of application no 2403678
by Arbre Group LLC
to register the trade mark:
in class 25
and the opposition thereto
under no 94795
by Worn By (Original Icon Clothing) LLP
Introduction
1) On 28 September 2005 Arbre Group LLC, which I will refer to as Arbre, applied to
register the above trade mark. (As a result of an error the application was originally
made in the name of Catherine Coe; this was corrected as a result of a facsimile
transmission dated 12 October 2005.) The trade mark was published for opposition
purposes on 25 August 2006 with the following specification:
articles of clothing for men and women including T-shirts, polo shirts, tank tops, vests,
camisoles, jumpers, hoodies, tracksuit tops, shirts, underwear, socks, wristbands,
headgear, headbands, baseball caps, woolly hats.
The above goods are in class 25 of the Nice Agreement concerning the International
Classification of Goods and Services for the Purposes of the Registration of Marks of 15
June 1957, as revised and amended.
2) On 24 November 2006 Worn By (Original Icon Clothing) LLP, which I will refer to as
WB, filed a notice of opposition to the registration of the trade mark. WB claims that
registration of the trade mark would be contrary to section 3(6) of the Trade Marks Act
1994 (the Act). It claims:
“An individual behind Arbre Group LLC was originally a shareholder in a
company that sold clothing under the opponent’s WORN BY trade mark (the
earlier right referred to on page 3). The individual left this company but
subsequently adopted the opposed trade mark for clothing and headgear. His use
of the opposed trade mark, under the company name Arbre Group LLC, falls
short of the standards of acceptable commercial behaviour observed by reasonable
and experienced people in the clothing market.”
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