Gallivant fails to bridge the gap

1st Sep 2019

Laura Robyn details how a lack of compelling evidence stopped the Opponent’s advance. O/293/19, BROOKLYN (Opposition), UK IPO, 29th June 2019.

Gallivant fails to bridge the gap

O/293/19, BROOKLYN (Opposition), UK IPO, 29th June 2019

This case concerned an opposition against an application to register the mark BROOKLYN for perfumes in class 3, filed by Laurice El Badry Rahme Ltd (the Applicant). It was opposed by Gallivant Perfumes Ltd (the Opponent) on the basis of unregistered rights in BROOKLYN (s5(4)(a) EUTMR), as well as absolute grounds (s3(1)(a), (b) and (c)) and bad faith (s3(6)).

The Hearing Officer (HO) first considered the absolute grounds advanced, which stated that because “numerous companies use BROOKLYN in relation to perfumes” the mark is a geographical indication, is dilute and incapable of performing the origin function of a trade mark under s3(1)(a), and lacks the necessary degree of inherent distinctiveness to be registrable under s3(1)(b). Both grounds were swiftly dismissed on the basis that the Opponent had not supplied evidence to corroborate its claim (other than “State of the Register” evidence, which has no relevance to the marketplace). The HO could not accept that the UK public would view Brooklyn as a perfume-making centre.

The HO applied the same finding to the assessment of whether the mark was descriptive of perfumes, concluding that “the Opponent has not shown that the average consumer of perfume in the UK believes the borough [Brooklyn] to be well known for anything”. All s3(1) claims fell.

Bad faith

The HO deduced from the evidence that the Applicant’s earliest use of BROOKLYN dates to 2010, whereas the Opponent’s BROOKLYN perfume was launched in March 2017. The Applicant is therefore the senior user, and the HO held that the Applicant’s application was consistent with standards of acceptable commercial behaviour. The s3(6) ground also fell.

Contradictory grounds

The HO noted the Opponent’s contradictory grounds, it having first asserted that BROOKLYN is not capable of performing as a trade mark only to go on to claim unregistered rights in the same mark for identical goods.

Moving on to the classic trinity, the HO pieced together the Opponent’s limited evidence and found that, despite its low sales value in the context of the UK perfume market, the Opponent had goodwill in the BROOKLYN name. Given the identical marks and identical goods, he was satisfied that the Opponent also cleared the misrepresentation and damage hurdles. 

However, the HO went on to consider the Applicant’s earliest use of BROOKLYN, in selling its “Bond No. 9 Brooklyn” fragrance in the UK. For the purposes of deciding whether the passing off claim was successful, the HO had to determine whether the earliest use of the Bond No. 9 Brooklyn mark constituted genuine use of BROOKLYN. 

The HO held that, since the word BROOKLYN appeared repeatedly in the centre of the label in a larger script, the public would likely be able to distinguish the Bond No. 9 and NYC elements as the manufacturer and company location, respectively. He was therefore satisfied that the relevant sales evidence went towards showing use of BROOKLYN, making the Applicant the senior user of the mark.

Consequently, the passing off claim also fell, and the opposition was dismissed in its entirety.

Key points

  • A claim of bad 
  • faith will require more than merely making an application to register in the knowledge that third parties are using the mark
  • The decision confirms longstanding practice that a place name can successfully function as an indication of trade origin; the question being how the relevant consumer would assess the name in connection with the goods/services in question

Laura Robyn is a Trainee Trade Mark Attorney at Haseltine Lake Kempner LLP
 

Author

  • Laura Robyn

    Trade Mark Assistant, Haseltine Lake Kempner LLP (Bristol)