Decision Nº O/484/21 from Intellectual Property Office - (Trade market), 25 June 2021
| Judge | Mr A James |
| Date | 25 June 2021 |
| Administrative Decision Number | O/484/21 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003419713 |
O/484/21
TRADE MARKS ACT 1994
TRADE MARK APPLICATION No. 3419713
BY SHAKERA TAYUB
AND
OPPOSITION No. 418473
BY SHAKIRA MEBARAK
Page 2 of 42
Background and pleadings
1. This is an opposition by the musical artist known as Shakira (“the opponent”) to an
application filed on 7th August 2019 (“the relevant date”) by Shakera Tayub (“the
applicant”).
2. The contested trade mark is shown below.
3. The applicant applies to register the mark in relation to:
Class 4: Candles; fragranced or scented candles; aromatherapy candles;
candle wicks; nightlights.
Class 20: Furniture; mirrors; picture frames; body pillows; pillow forms;
cushions; picture frames; plate racks; seat cushions; furniture seats; window
shades [blinds]; chair pads; seat covers; decorative fabric pillows; trinket boxes.
Class 21: Dishes; glassware; tableware; coffee pots; teapots and tea kettles;
tea cups; trays; cake stands; cutting boards; pastry boards, candle holders;
coasters; drying racks; sponges; flasks; food containers.
Class 24: Textiles; upholstery (fabrics); textile piece goods; bed and table
covers; household linen; linen cloth; bed linen; bath linen; table linen; table
cloths; curtains of textile or plastic; pillow shams; pillow cases; sheets; towels;
duvets; covers for duvets; covers for cushions; cushion covering materials;
table runners; table mats; napery; napkins; table mats (not of paper); towels;
flannels; tissues (textile); traced cloth for embroidery; tapestry (wall hangings)
of textile; rugs (travelling); furniture coverings of plastic; blankets; coasters;
eider downs; furniture coverings; handkerchiefs; mattress covers.
Page 3 of 42
Class 25: Clothing, namely, scarves, shawls, capes, saris, kimonos, headbands
and wristbands, sarongs, headbands, ties and belts
4. The opponent, whose full name is Shakira Mebarak, is the proprietor of EU trade
mark 2870863, which consists of the word SHAKIRA. The application to register this
mark was filed on 1st October 2002 and the mark was entered in the EU trade mark
register on 1st July 2004. The earlier trade mark is registered for goods and services
in four classes, but the only goods and services relied on for the purposes of this
opposition are clothing in class 25 and entertainment services in the nature of live
performances in class 41.
5. The opponent claims that the earlier trade mark is highly similar to the contested
trade mark and the goods in class 25 are identical. Therefore, there is a likelihood of
confusion on the part of the public. Consequently, the application to register the
contested trade mark in class 25 should be refused under section 5(2)(b) of the Trade
Marks Act 1994 (“the Act”).
6. Additionally, the opponent claims that the earlier mark has acquired a reputation in
the EU (which included the UK at the date the opposition was filed) in relation to the
goods/services described in paragraph 4 above. The opponent claims that the public
will make a link between the earlier mark and the contested mark and that it’s use will,
without due cause, take unfair advantage of, and /or be detrimental to, the reputation
and distinctive character of the earlier mark. Consequently, the application should be
refused in its entirety under section 5(3) of the Act.
7. Additionally, the opponent claims to be the proprietor of an earlier unregistered right
in SHAKIRA as a result of the use of that mark in the UK since 2001 in relation to
clothing, entertainment services in the nature of live performances, recordings of live
performances, music, and musical recordings.
8. The opponent claims that use of the contested mark would constitute a
misrepresentation to the public that the applicant is, or is connected to, the opponent.
According to the opponent, this will result in damage to the opponent’s goodwill.
Consequently, the application should be refused in its entirety under section 5(4)(a) of
the Act.
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