Trade mark decision

BL Number

O/204/98

Decision date

20 October 1998

Hearing officer

Mr M Reynolds

Mark

PERRY ELLIS AMERICA

Classes

03

Applicants

Milton-Lloyd Ltd

Opponents

Perry Ellis International Inc

Opposition

Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(6): - Opposition failed.

Section 5(2)(b): - Opposition failed.

Section 5(3): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest

• 1. None

Summary

The opponents opposition was based on their ownership of a registered mark in Class 25 (clothing) consisting of PERRY ELLIS AMERICA, a device of an eagle and a ribbon device bearing 5 stars; together with an earlier application for the same mark in Class 3 (which was opposed by the applicants in these proceedings). Both parties claimed some use of their marks but this was not extensive or well documented. The opponents also appeared to have used PERRY ELLIS but relevant evidence was not filed.

Under Section 5(2)(b) the Hearing Officer accepted that the opponents had an earlier right (subject to any appeal) and that identical goods were at issue. In comparing the respective marks the Hearing Officer found that they created quite different visual impressions which were easily distinguishable. While there was some conceptual similarities in that both evoked an American source of origin, this was insufficient to reach a conclusion that there was a likelihood of confusion.

The opponents claimed that Perry Ellis was a well known fashion house and that it was natural that they should extend their trade from clothing (Class 25) into perfumes and cosmetics (Class 3). However, under Section 5(3) the Hearing Officer concluded that while evidence of reputation in the name Perry Ellis might have been available it had not been filed in these proceedings. In the light of this failing the opponents failed on their Section 5(3) ground. Under Section 5(4)(a) - Passing Off - the Hearing Officer concluded that the opponents must also fail on this ground since they had filed insufficient evidence to establish a reputation in relation to the goods at issue nor had they filed evidence to show a reputation in relation to clothing - even if clothing was accepted as a related class of goods to perfumes etc.

Under Section 3(6) - Bad Faith - The Hearing Officer took the view that the applicants specification as claimed was not unduly broad. In relation to other claims under this head the Hearing Officer concluded that the opponents had filed insufficient evidence to establish that the applicants had acted in bad faith when they applied to register their mark. The opponents had filed correspondence between the two parties legal advisor’s but the Hearing Officer felt that such correspondence suggested a negotiating stance rather than any admission.