Trade mark decision

BL Number

O/387/02

Decision date

26 September 2002

Hearing officer

Mr M Reynolds

Mark

McQUEEN CLOTHING CO

Classes

18, 25

Applicants

Nicholas Stephen Croom t/a McQueen Clothing Co

Opponents

Lee Alexander McQueen

Opposition

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

Result

Section 3(6) - No formal finding

Section 5(2)(b) - Opposition successful (provisionally)

Section 5(4)(a) - Opposition successful

Points Of Interest

• 1. Surnames
• 2. Honest concurrent use
• 3. Passing-off: Expansion of use into area of conflict

Summary

The opponent’s case was that he was engaged in the design, production and marketing of clothing and fashion accessories and was the proprietor of Community Trade Mark applications for the marks ‘ALEXANDER McQUEEN’ and ‘McQUEEN’ (stylised).

The Hearing Officer found that the surname McQUEEN was relatively uncommon and the totality was inherently distinctive.

He also considered that within the marketplace for haute couture the mark ALEXANDER McQUEEN was entitled to claim an enhanced degree of distinctive character. The goods were the same and there was a strong degree of similarity between the respective marks; there was a clear likelihood of confusion. The evidence of honest concurrent use was not good enough to displace this finding and the opposition under Section 5(2) therefore succeeded, subject to the Community Trade Mark applications’ eventually achieving registration.

The applicant’s specification would not prevent him expanding into, or into close approximation to, the area occupied by the opponent with consequent damage to the latter business. The Hearing Officer therefore found for the opponent under Section 5(4)(a) also.

The Hearing Officer went on to comment that the applicant’s claim to have used the mark from a date prior to the opponent’s use meant that the Section 3(6) objection had little prospect of success, but he made no formal finding under that head.