Re Fiorelli Trade Mark Applications; Lunan Group Ltd v Edwin Company Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Alan Steinfeld QC |
| Judgment Date | 14 December 2006 |
| Neutral Citation | [2006] EWHC 3284 (Ch) |
| Court | Chancery Division |
| Docket Number | Case Nos: CH/2003/APP/006&7 |
| Date | 14 December 2006 |
[2006] EWHC 3284 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
ON APPEAL from
The Comptroller-General of Patents, Designs and Trade Marks
Mr Alan Steinfeld Qc
(sitting as a deputy judge of the High Court)
In the Matter of the Trade Marks Act 1994
And in the Matter of the Trade Mark Application No. 2 195 383 for the Registration of the Mark Fiorelli in Classes 9, 14 and 18 and Opposition No. 50920
And in the Matter of the Trade Mark Application No. 2 219 833 for the Registration
Of the Mark Fiorelli in Class 25 and Opposition No. 52204
Case Nos: CH/2003/APP/006&7
Mr George Hamer (instructed by Mayer Brown Rowe & Maw) for the Applicant
Mr Michael Edenborough (instructed by Medyckyj & Co) for the Respondent
Approved Judgment
Hearing dates: 23 and 24 November 2006
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic
Introduction
There come before me two appeals pursuant to Section 76 of the Trade marks Act 1994 ("the Act"). Both appeals are by a company called The Lunan Group Limited ("the Applicant"), which appears before me by Mr Hamer, against the refusal of the Registrar of Trade Marks, acting by his hearing officer, a Mr S.P. Rowan ("the Hearing Officer"), by written determinations made by him on 6 th December 2002 to register in various classes the trade mark "FIORELLI" which the Applicant owns. The applications were opposed in each case by a company called Edwin Co. Limited ("the Opponent"), and which is the respondent to each appeal, appearing before me by Mr Edenborough, on the ground that the mark sought to be registered was confusingly similar to its own already registered trade mark "FIORUCCI" and so ought not to be registered on the ground set out in section 5(2)(b) of the Act.
On each application the Hearing Officer by his written determinations upheld that opposition. That is to say he held that within the meaning of section 5(2)(b) because the Applicant's trade mark was similar to the Opponent's earlier trade mark already registered and was to be registered for goods identical with or similar to those for which the earlier trade mark was protected, there existed "a likelihood of confusion on the part of the public, which included the likelihood of association with that earlier trade mark". Each appeal is against those determinations
The appeals thus raise in each case the same or virtually the same issues, and the evidence which was before the Hearing Officer on each application was the same or virtually the same. Indeed, although there are two separate written determinations made by the Hearing Officer, there was a single hearing before him. The difference between the two applications relates solely to the classes of goods in respect of which the Applicant seeks to register its trade mark. It is, however, common ground that both marks have been and are being used in what can loosely be termed the fashion or "designer goods" market. The first application sought the registration of the FIORELLI mark in Classes 9 (spectacles and sunglasses), 14 (watches and jewellery) and 18 (bags, small leather goods and umbrellas). In the second application the registration is sought in respect of Class 25 (clothing).
Background
The history of the two marks and the use to which they have respectively been put was covered in some detail in the evidence before the Hearing Officer and was not in dispute. The earlier of the two marks, namely the Opponent's mark "FIORUCCI", has been in use since the early 1970's. The name derives from the surname of the Italian designer, Sr Elio Fiorucci, who first began selling products under the name FIORUCCI in Italy in 1967. The products thus sold have consisted of "designer clothing and other fashion accessories such as sunglasses, bags, jewellery, stationery and watches" (paragraph 11 of the Witness Statement of Mr Nicholas Vratsidas made on 21 st December 2000). These products have over years been sold in a large number of Italian cities and, since about 1971, in the UK. The turnover in the UK reached a peak of about £3 million in 1988. However, in 1990 the Fiorucci group suffered a setback when it went into liquidation. The Opponent subsequently purchased the business, including the trade marks. It seems that the business in the UK was re-established in or about the year 1995. From that year until 1999 sales in the UK of FIORUCCI branded products were approximately £1 million per annum (paragraph 10 of Mr Vratsidas's Witness Statement). That figure has not, however, been broken down as between clothing and other fashion accessories, including handbags, although it was apparently said to the Hearing Officer that it consisted predominantly of clothing. The FIORUCCI mark was first registered on 30 th August 1979 in Class 25 (i.e. clothing) and subsequently on 27 th July 1981 in Class 18 (bags, small leather goods and umbrellas).
The FIORELLI mark did not commence to be used in the UK or, indeed, so far as the evidence goes, anywhere else until the early 1990's. At first the use was restricted to the sale of leather handbags and other like accessories. However, later, from about 1993 onwards, the sale of FIORELLI branded products extended into watches, sunglasses and footwear. From 1993 onwards the brand has also been extended to clothing. The turnover under the FIORELLI trade mark has been far more extensive than that under the FIORUCCI trade mark. So, to give some figures (taken from the undisputed evidence before the Hearing Officer):
(i) in 1995 sales of FIORUCCI products were £968,032, as compared to sales of FIORELLI products totalling £3.3 million in respect of bags and small leather goods, £55,000 in respect of eyewear and £100,000 in respect of clothing;
(ii) in 1996 estimated sales of FIORUCCI products were £1.025 million, as compared with sales of FIORELLI bags and small leather goods of £4.3 million, eyewear of £62,000 and clothing of £100,000;
(iii) in 1997 sales of FIORUCCI products were £926,883 as compared with sales of FIORELLI bags and small leather goods of £6.1 million, eyewear £90,000, watches £31,000, umbrellas £11,000 and clothing £333,000;
(iv) in 1998 sales of FIORUCCI products were £973,246 as compared with sales of FIORELLI bags and small leather goods £8 million, eyewear £70,000, watches £49,000, umbrellas £25,000 and clothing £370,000.
(v) in 1999 sales of FIORUCCI products were £934,087 as compared with sales of FIORELLI bags and small leather goods £8.5 million, eyewear £59,000, watches £60,000, umbrellas £69,000 and clothing £700,000.
In June 1992 application was first made to register the FIORELLI trade mark in Class 18. At that time there was no opposition from FIORUCCI. Mr Edenborough asked me to infer that that was probably to do with the fact that the FIORUCCI group had only shortly before then gone into liquidation. That may or may not be the case. The Registrar had, it seems, some concerns as to the similarity of the mark with some earlier trade mark, which was probably the FIORUCCI mark. However, the FIORELLI mark was in due course registered on 5 th April 1995 in Class 18. The subsequent applications, which were refused and which are the subject of this appeal, are, therefore, essentially to extend the registration to the other areas of sales into which FIORELLI has expanded, namely eyewear, watches and jewellery and clothing.
The Determinations of the Hearing Officer
The Hearing Officer dealt with both applications in two separate determinations. As the evidence and the submissions were substantially the same in both applications, not surprisingly those determinations are similar in form and content. Before me submissions were largely concentrated on the determination in respect of the Class 25 application. In the circumstances I shall concentrate also on that determination, but making reference to the other determination where requisite.
The determination is on its face carefully structured and very comprehensive. Mr Hamer, who has considerable experience of appearing before the Registrar's hearing officers on these applications, assures me that the format of the determinations in these matters is largely standard. Whilst that may be so, it does not seem to me that that in any way detracts from the comprehensiveness of the determination and the very careful way in which the Hearing Officer, who I take to be highly experienced in these matters, dealt with the applications.
In paragraphs 5 to 38 the Hearing Officer dealt thoroughly with the evidence before him, summarising the main points which were made in the various Witness Statements. In paragraphs 39 to 42 he dealt with the applicable law. In particular in paragraph 41 he set out the various factors, numbering nine in all, which the authorities, in his view, made clear he ought to bear in mind in considering the test for confusing similarity under Section 5(2)(b). It is accepted by both Counsel before me that that paragraph contained an accurate summary of the relevant factors.
In the ensuing paragraphs the Hearing Officer then set out to apply each of these factors to the marks in question.
The first matter which the Hearing Officer considered was the "Reputation/inherent distinctiveness of the earlier trade mark". As he put it in paragraph 44:
"The case law set out above indicates that one of the many factors to be taken into account is the distinctiveness of the Opponent's earlier trade mark. The mark may possess that distinctive character because of the inherent nature of the mark, or it may enhance its distinctive character through the use that has been made of it....
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