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Trade Mark Opposition Decision (0/133/02)

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Trade Mark Opposition Decision (0/133/02) TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION NO 2191548 BY MANCHESTER CLOTHING LTD TO REGISTER A MARK IN CLASS 25 AND IN THE MATTER OF OPPOSITION THERETO UNDER NO 50567 BY VIVIENNE WESTWOOD S.R.L. TRADE MARKS ACT 1994 IN THE MATTER OF Application No 2191548 by Manchester Clothing Ltd to Register a Mark in Class 25 and IN THE MATTER OF Opposition thereto under No 50567 by Vivienne WESTWOOD S.R.L. DECISION 1. On 12 December 1999 Manchester Clothing Co Ltd applied to register the mark shown below in relation to “clothing, footwear and headgear” in Class 25. 2. The Trade Mark Journal advertisement contains the following clause “the applicant claims the colours red, yellow and white as an element of the mark”. The application is numbered 2191548. 3. On 29 December 1999 Vivienne Westwood Srl filed notice of opposition to this application. The opponent is the proprietor of the trade mark VIVIENNE WESTWOOD. This mark is said to have been used in the UK for many years in relation to designer clothing and related products as a result of which substantial reputation and goodwill has been generated. 4. The opponent is also the proprietor of the Community Trade Mark registration details of which are set out in the Annex to this decision. A further CTM referred to in the grounds was not relied on at the hearing. 5. On the basis of these circumstances objections are said to arise under Section 5(2)(b), 5(3) and 5(4)(a) of the Act. The actual wording of the objections largely mirrors the wording of the Act without further elaboration. Further objections are said to arise under Section 5(2)(b) and 5(3) on the basis that the opponent’s trade mark has well known marks status and is 2 entitled to protection under the Paris Convention but these objections were not pursued as separate issues at the hearing. 6. The opponent also objects under Section 3(6) claiming that the application has been made in bad faith. No further explanation is offered to support the claim. Finally there is a reference to exercise of the Registrar’s discretion. As there is no such overriding power I need say no more about the latter. 7. The applicants filed a counterstatement denying the above claims against them, questioning the sufficiency of certain of the grounds as pleaded and asking for full and better particulars. It is not clear what (if any) action was taken at the time in response to the applicants’ points. 8. Both sides ask for an award of costs in their favour. 9. Both sides filed evidence. The matter came to be heard on 1 March 2002 when the opponent was represented by Ms C May of Counsel instructed by Mathisen Macara & Co. The applicants were not represented at the hearing. Opponent’s Evidence 10. The opponent filed a declaration by Carlo D’Amario, the President of the Board of Directors of Vivienne Westwood Srl based in Milan. 11. Mr D’Amario says that Vivienne Westwood began designing clothes in 1971 along with her partner Malcolm McLaren. The partnership is said to have lasted until 1984 during which time Vivienne Westwood became well known for her avant-garde designs. Mr D’Amario’s company was established in 1984 to manufacture and supply clothes under the VIVIENNE WESTWOOD trade mark. The range has since been sub-divided into different lines with the ANGLOMANIA line being launched in 1998 (I infer that this is the mark which is the subject of community trade mark No 553370). The development of Vivienne Westwood’s career and the fashion label that bears her name is outlined in a ‘Brochure Presentation’ (Exhibit A). 12. Mr D’Amario says that the products sold under the VIVIENNE WESTWOOD trade mark in the UK are mainly manufactured by his company’s licensees in accordance with his company’s directions and distributed in the UK by Vivienne Westwood Ltd. The relationship between Vivienne Westwood Ltd and his company is that the members of his company are also members of Vivienne Westwood Ltd. His company mainly deals with the manufacturing side of the business whereas Vivienne Westwood Ltd deals with the stylistic creation, production and distribution of VIVIENNE WESTWOOD goods in the UK. 13. The VIVIENNE WESTWOOD trade mark has been used in the UK in relation to clothing and accessories such as shoes, jewellery, bags, belts, wallets and other leather goods, sun glasses and perfume. Exhibit B are examples of labels and packaging showing the manner in which the VIVIENNE WESTWOOD trade mark is used in relation to the goods. 14. The goods are sold throughout the UK. A list of retailers is shown at Exhibit C. I note that the list contains a mixture of leading stores (Liberty, Harvey Nicholls, Selfridges), a small 3 number of flagship stores bearing the designer’s own name and what I take to be independently owned retail shops. 15. Sales figures for goods sold under the VIVIENNE WESTWOOD trade mark in the UK are as follows:- YEAR £ 1996 3,429,285 1997 5,052,003 1998 5,835,062 1999 3,682,698 16. It is not said how these sales figures break down across the range of clothing and accessories referred to above. However, the supporting invoices (Exhibit D) appear to relate primarily to clothing with some clothing accessory items (cufflinks) also shown. I infer that the bulk of the sales are likely to be of clothing consistent with the main thrust of the business. 17. During the years 1995-2000, Vivienne Westwood Ltd spent the following amounts on advertising and promoting VIVIENNE WESTWOOD products in the UK by means of brochures, leaflets, press advertisements etc. YEAR £ 1995 40,000 1996 60,000 1997 80,000 1998 100,000 1999 100,000 2000 100,000 18. Examples of advertising and promotional materials are shown at Exhibit E. 19. In addition to the above mentioned advertising, VIVIENNE WESTWOOD clothes and accessories are displayed at fashion shows. In the years 1995-1998, Vivienne Westwood Ltd participated in two UK fashion shows each year incurring the following expenses: YEAR £ 1995 50,000 1996 50,000 1997 50,000 1998 50,000 20. Exhibit F contains examples of articles which have appeared in the UK press concerning fashion shows at which VIVIENNE WESTWOOD clothes and accessories have been shown. The reputation thus established is said to have been reinforced by articles in newspapers and 4 magazines having a circulation in the UK and by the publication of a book entitled ‘Vivienne Westwood’. Examples of these articles and a copy of the book are at Exhibit G. 21. By virtue of the above Mr D’Amario submits that anyone seeing the name Westwood used in relation to clothing or accessories would believe there to be a connection with Vivienne Westwood and products manufactured and supplied by Vivienne Westwood Srl. Applicants’ Evidence 22. The applicants filed a witness statement by Zahid Shafi, a Director of Manchester Clothing Ltd. 23. Mr Shafi says that Manchester Clothing is a leading wholesaler of children’s clothing being predominantly school wear and sports wear. Approximately 90 per cent of the goods are sold to clothing retailers and 10 per cent to clothing wholesalers. The goods are said to be “sold to many hundreds of customers throughout the UK”. 24. Manchester Clothing is said to have first adopted the trade mark WESTWOOD in relation to the goods in 1980 and to have used it continuously since in various forms including in the form shown in the present application in which the word WESTWOOD is in combination with the ‘WW’ shield device - that has been the predominant form of use since about 1995 onwards although that form was first adopted in the early 1980s. 25. Examples of various forms of the label used since 1980 are shown in Exhibit ZS 1. 26. Turnover under the WW WESTWOOD label is given as follows: YEAR TURNOVER BY CASH 1995 1,625,750 1996 1,720,000 1997 2,170,770 1998 2,002,112 1999 1,950,725 These are wholesale values. Retail values are said to be 50 to 80 per cent greater. 27. The following sums have been spent on promotional material: YEAR COSTS OF LABEL , LETTERHEADS COST OF SHOW CARDS ETC ADVERTISING 1995 £6,725 £2,440 1996 £6,980 £2,600 1997 £7,450 £2,750 1998 £7,700 £2,900 1999 £8,000 £3,500 5 28. The goods have also been exhibited at trade shows held at the National Exhibition Centre, Birmingham. Exhibit ZS2 contains examples of the use of the WW WESTWOOD trade mark on and in relation to the goods and in their promotion. 29. Mr Shafi goes on to offer what amount to submissions on the opponent's evidence. The main points seem to me to be: - it is not disputed that Vivienne Westwood is a well known and highly regarded fashion designer. - she is known and referred to by her full name and not the surname WESTWOOD alone. - use of VIVIENNE WESTWOOD on any significant commercial scale does not seem to have commenced until 1984 that is after the applicants first used WESTWOOD. - there is nothing to suggest that the VIVIENNE WESTWOOD mark has been or will be used in relation to children’s wear and sportswear. Rather it is a designer label or haute couture - the respective goods are in different sectors of the market. Opponent's Evidence in Reply 30. Mr D’Amario filed a further declaration the primary purpose of which appears to be to dispute Mr Shafi’s assertion that the opponent does not use WESTWOOD alone as a trade mark in relation to clothing.
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