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Trademark Inter Partes Decision (O/333/11)

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Trademark Inter Partes Decision (O/333/11) TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION No. 2530115 BY ASOS PLC TO REGISTER THE TRADE MARK ASOS IN CLASSES 3, 8, 9, 11, 14, 18, 21, 25, 26, 35 & 36 AND IN THE MATTER OF OPPOSITION THERETO UNDER Nos. 100351 BY ANSON’S HERRENHAUS KG BACKGROUND 1) On 28 October 2009 ASOS Plc (hereinafter the applicant), applied to register the trade mark ASOS in respect of the following goods and services: Class 3: Soaps; cosmetics; perfumery; essential oils; eau de parfum; eau de toilette; cologne; fragrances and fragrance products for personal use; massage oils; hair lotions; cosmetics; cosmetic preparations for skin care; skin care cosmetics; skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels; scented body lotions and creams; scented moisturizing skin cream; moisturisers; body lotions and creams; moisturising creams; scented skin soap; body oil; face, lip and cheek make-up; face powder; face glitter; lipstick, lip gloss, non- medicated lip balm, lip pencils; perfumed shimmer sticks; eye shadow, eye pencils, mascara, eye make-up, eyeliners, eye creams, eye gels, eye balms; highlighter; masks; cleansers; toners; clarifiers; exfoliators; foundation make-up; blusher; compacts; make- up remover; fragrance sachets; room fragrances; beauty care preparations; beauty care products; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; non-medicated beauty preparations; non-medicated skin care beauty products; skin care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions and serums; anti-aging treatments; foundation for the face; hair care products, shampoo, hair conditioners, hair moose, hair moulding creams, hair gel and hair spray; nail care preparations, nail polish, nail strengtheners, and nail polish remover; shaving cream, shaving gel, after-shave preparations, after-shave lotion; depilatory preparations; personal deodorant; antiperspirants; potpourri; nail care preparations; nail varnish and remover thereof; sun tanning preparations; cosmetic preparations for skin tanning; artificial tanning preparations. Class 8: Manicure sets; hand operated tools for hairdressing and cases for the same; hair clippers for personal use (electric and non-electric); non electric hair curling implements; scissors; non-electric hair styling implements; non-electric hair tongs; non- electric hair waving apparatus; hair removing tweezers; hair removing devices; hair cutting apparatus and instruments; electrical hair care products (hand implements); hand tools and implements for hair; hand tools and implements for curling, cutting, crimping, straightening, styling, trimming or waving hair; hairdressing appliances included in class 8, all for personal use; braiders; electric apparatus for hair cutting and trimming; hair styling apparatus; parts, fittings and accessories all for the aforesaid goods. Class 9: Sunglasses; spectacles; eyewear; spectacle cases, chains and eyeglass frames; eyeshades, lenses; electrical appliances for styling the hair; electric hair curling irons; electric hair straightening irons; electric apparatus for hair crimping, straightening, styling. Class 11: Apparatus for drying hair; apparatus for heating hair; hairdryers and cases for the same; parts, fittings and accessories all for the aforesaid goods. 2 Class 14: Precious metals and their alloys and goods in precious metals or coated therewith; precious and semi-precious stones; jewellery; fashion jewellery; amulets; bracelets; brooches and lapel pins; chains; charms; cuff links; earrings; rings; tie clips and pins; horological and chronometric instruments; wrist watches; clocks; boxes, cases and containers of precious metals; hat and shoe ornaments of precious metals; figurines and statuettes of precious metals; badges of precious metal; objects of imitation gold. Class 18: Articles of leather and imitations of leather; trunks and travelling bags; travel cases; luggage; suitcases; holdalls; portmanteaux; valises; bags; handbags; shoulder bags; toilet bags; carrier bags; rucksacks; backpacks; bumbags; casual bags; briefcases; attaché cases; music cases; satchels; beauty cases; carriers for suits, for shirts and for dresses; tie cases; credit card cases and holders; wallets; purses; umbrellas; parasols; walking sticks; shooting sticks; belts; parts and fittings for all the aforesaid goods. Class 21: Brushes; combs; comb cases; electric combs; large-toothed combs for the hair; hairbrushes; fitted cosmetic bags; parts, fittings and accessories for all the aforesaid goods. Class 25: Articles of clothing; footwear; boots, shoes, slippers, sandals, trainers, socks and hosiery; headgear; hats; caps; berets; scarves; gloves; mittens; belts (being articles of clothing); shirts, blouses, casual shirts, T-shirts, vests, camisoles, bodysuits, polo shirts, sports shirts, football and rugby shirts; trousers, jeans, shorts, sports shorts, swimwear; underwear; lingerie; tracksuits; articles of outerwear, coats, jackets, ski jackets, casual jackets, waterproof and weatherproof jackets and coats, parkas, body warmers, ski wear; suits; dresses; skirts; culottes; jumpsuits, playsuits; sweatshirts; jumpers, shrugs and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; headbands and wristbands; legwarmers; menswear; womenswear; childrenswear. Class 26: Articles for the hair; badges; barrettes; bows for the hair; braids; false hair; hair bands; hair clips; hair fasteners; hair grips; hair slides; hair nets; hair ornaments; hair pins; plaited hair; tresses of hair; hair ribbons; ponytail holders; ribbons. Class 35: The bringing together for the benefit of others, of a variety of perfumery, toiletries and cosmetics, bathing and personal cleansing and care products, candles, pharmacy goods, hardware and metal goods, cutlery, optical goods and sunglasses, lighting equipment and fixtures, jewellery, watches, horological and chronometric goods, musical instruments, furniture, furnishings and decorations, kitchenware, domestic utensils, crystal, glassware, porcelain and chinaware, brassware, ornaments, hair accessories, hampers, piece goods, sewing accessories, bags made from canvas, straw, plastic and PVC, bed and table linen, towels, bags, leather and travel goods, luggage, clothing and accessories, footwear, headgear, carpets and rugs, artwork, toys (including novelty toys), games, playthings and sporting goods, fitness equipment, equestrienne goods, decorations, food and confectionery, non-alcoholic and alcoholic 3 beverages, pets, enabling customers to conveniently view and purchase those goods from an Internet web site or by means of telecommunications or by means of a global network or by mail order catalogue or from a retail store. Class 36: Arranging and providing credit, debit and charge card services; provision and arranging of payment protection insurance; arranging and providing hire purchase agreements; management of customer accounts and mail order accounts. 2) The application was examined and accepted, and subsequently published for opposition purposes on 1 January 2010 in Trade Marks Journal No.6817. 3) On 1 April 2010 Anson’s Herrenhaus KG (hereinafter the opponent) filed a notice of opposition. The ground of opposition is in summary: a) The opponent is the proprietor of the following trade marks: Mark Number Filing date/ Class Specification registration date Anson's CTM 29.07.03 / 35 Retail trade services. 3292117 07.12.04 Anson's CTM 30.11.98 / 3 Bleaching preparations and other substances for laundry 1001999 16.03.01 use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. 14 Precious metals and their alloys and goods in precious metals or coated therewith (included in class 14); jewellery, precious stones; horological and chronometric instruments. 16 Paper, cardboard and goods made from these materials, included in class 16; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging, included in class 16; playing cards; printers' type; printing blocks. 18 Leather and imitations of leather, and goods made of these materials, included in class 18; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. 25 Clothing, footwear, headgear. 35 Advertising; business management, business administration; office functions. ANSON'S CTM 25.06.96 / 25 Clothing. 303511 14.05.98 b) The opponent states that its marks above are earlier marks and that the goods and services and the trade marks are identical and/or similar to the mark applied for and its specification. As a result it contends that the mark in suit offends against Section 5(2)(b) of the Act. 4 4) On 1 March 2010 the applicant filed a counterstatement which whilst accepting that some of the goods were identical or similar, basically denied the opponent’s claims. 5) Both parties filed evidence, and both seek an award of costs in their favour. The matter came to be heard on 6 September 2011. At the hearing, the applicant was represented by Ms Reid of Counsel instructed by Messrs Dechert LLP; the opponent was represented by Mr Brownlow of Bird & Bird LLP. OPPONENT’S EVIDENCE 6) The opponent filed a witness statement,
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