Chancery has recently pronounced judgment in a battle over use of the word WARDROBE in branding. Key questions included just how much protection can a registration of such an apparently generic word confer in respect of “bags for women, suits, jackets, evening wear, knitwear, shoes, headgear: all for women” confer. Thomas Spanyol reports.
Who: Meemi Limited (“Meemi”), Wardrobe (Beautiful Clothes) Limited (“WBC”)
When: 18 December 2012
Where: High Court, Chancery Division
In December a trade mark and passing off dispute between two
fashion retailers came before the High Court on appeal. His Honour Robert Engelhart QC, sitting as a Deputy Judge of the Chancery Division, had to assess the earlier decision of a hearing officer.
The longer-established of the two retailers was WBC. WBC is the company name of luxury London women’s clothing retailer Wardrobe. WBC has had a trade mark registration since 1999 for the word mark WARDROBE. The mark covers limited types of goods: “bags for women, suits, jackets, evening wear, knitwear, shoes, headgear: all for women”.
Meemi Limited runs online store my-wardrobe.com. It has held two registered trade marks since June 2010: a word mark for MY-WARDROBE.COM and a device mark as follows:
So what was the dispute about?
Meemi had initially challenged the validity of WBC’s WARDROBE trade mark on the grounds that it was an ordinary English word describing an individual’s collection of clothes. As such, Meemi felt it failed under the following two provisions of the Trade Marks Act 1994 (“TM Act”), Section 3(1): “The following shall not be registered – … (b) trade marks which are devoid of any distinctive character. (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.”
WBC, in response, had challenged the validity of Meemi’s
MY-WARDROBE.COM trade marks on the grounds:
(a) that these marks should not have been registered in the first place, as they were identical or similar to WBC’s earlier trade mark and for goods or services identical with or similar to those protected by WBC’s mark. Because of this, there was a likelihood of confusion on the part of the public, including a risk of association with WBC’s
trade mark (this is applying the test under section 5(2) of the TM Act); and
(b) that use of these trade marks represented passing off on WBC’s brand, which will invalidate a trade mark (under sections 47(2)(b) and 5(4) of the TM Act).
And what did the hearing officer decide?
RE: Meemi’s arguments
The hearing officer dismissed Meemi’s argument that WARDROBE
was devoid of distinctive character. The relevant test for this was in case law from the European Court (Develey Holding GmbH Beeiligungs KG v OHIM  ETMR 20) which said that the meaning
of “distinctive character” was simply that a mark must be capable of
identifying a product as coming from a particular source. The officer’s view was that the trade mark WARDROBE could easily be incorporated onto POS material, price tags and/or items of clothing. As such it was hard to see how that would fail to identify the goods with the trade mark/brand.
On Meemi’s second argument, the hearing officer applied another case from the European Office for Harmonisation in the Internal Market (Metso Paper Automation oy v OHIM  ETMR 2 – known as the “PaperLab” case) which, in discussion of the test in 3(1)(c) of the TM Act stated that:
“… there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics”.
Based on his reading of PaperLab, WARDROBE was not just a
sign or indication, as it did not describe the characteristics of the items of clothing sold. In the words of the hearing officer, “that all one’s clothes either in their entirety or for a season can form a wardrobe does not describe a characteristic of individual clothes”.
RE: WBC’s arguments
The hearing officer ruled that WBC’s argument invalidating the MY-WARDROBE.COM marks because they were identical/similar to WBC’s earlier registration and for identical/similar goods or services failed. This was because WBC could not demonstrate genuine use of its trademark on goods in the 5 years prior to Meemi’s registrations.
However the hearing officer agreed with WBC’s other argument
– on passing off – and accordingly limited the specification of goods for which Meemi’s registrations could be used to eliminate any overlaps.
The hearing officer’s reasoning was that “for the customers of WBC and certain, if not all, persons in the fashion industry, WARDROBE means the business of WBC.” MY-WARDROBE.COM was therefore likely to be taken as an internet address of WBC. Although the companies did not operate in exactly the same field, there were many goods and services supplied by each which overlapped. As such
although there was no firm evidence of confusion as yet, damage was, in the hearing officer’s view, likely.
So what was the appeal about?
Meemi argued that the hearing officer had got it wrong on both counts. On the validity point he had wrongly applied the test for whether WARDROBE was a sign or indication. It was Meemi’s view that the PaperLab case in fact made it clear that this could either be a sign or indication relating to the individual items or to the collection of items as a whole. The hearing officer had failed to consider both parts of this test.
In terms of the passing off case, the hearing officer had not considered all the evidence regarding likelihood of deception. Meemi argued that this was unlikely because of the descriptiveness of the WARDROBE mark in the context of clothing. The key case in this area is Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 (the “Office Cleaning Services” case), which states that:
“where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed to unfairly monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion.
A greater degree of discrimination may fairly be expected from the
public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered”.
Meemi argued that not only were there sufficient differences between the marks to satisfy the threshold set by Office Cleaning Services, but the parties operated in different spheres, WARDROBE’s goodwill was limited to the London area and there had never been any evidence of confusion.
Meemi also believed the hearing officer had also been procedurally unfair by:
(1) finding that, although WBC had not used the mark in relation to goods for 20 years, there would nonetheless be some goodwill in it; and
(2) considering the prospect of damage, when neither of these points had been raised in argument at the hearing.
WBC argued that the point of an appeal was to review the
earlier decision, not to rehear the case.
The PaperLab case and the TM Act did not lay down a two stage test. The meaning of the word WARDROBE is solely collective; and cannot refer to any individual item of clothing, as the hearing officer had made clear.
There had been no procedural unfairness, argued WBC, because
numerous facts had been produced to demonstrate goodwill relating to the WARDROBE name in the initial hearing.
The goodwill specifically in relation to goods was peripheral. What mattered was the goodwill attaching to the name generally. In terms of damage, given that damage was part of the “classical trinity” of elements needed for a passing off claim, it had always been obvious that this had been in issue.
So what did the Judge decide?
HH Englehart QC decided as follows:
WBC and the hearing officer were right – the PaperLab case did not create a two-stage test. The TM Act and PaperLab case refer “to some, expressly identified or more general, characteristic of goods or services which may be designated by a trade mark. They do not refer to designations of goods or services as such.”
There was no way that WARDROBE could be considered as a
characteristic of the clothes sold by WBC.
Meemi’s appeal on this point was dismissed.
The Judge also preferred WBC’s arguments on the goodwill and damage points, ruling that the relevant goodwill applied to the overall brand WARDROBE, not just to the goods.
However, the Judge found that Meemi was correct that the hearing officer had erred on the likelihood of deception point, given the generic nature of WARDROBE and the points on the businesses operating in different spheres (exclusively online retailer v exclusively high-street boutique) and WBC’s limited geographical reach (London area only).
The hearing officer had made an error of principle by not
considering these three things together.
As such, the Judge overturned the restrictions on Meemi’s trade
Why this matters:
Although the judgment ended up as a no-score draw for the parties, it raises some interesting take-home points for marketing lawyers:
Getting a “generic” term registered as a trade mark in the first place is rarely easy.
One of the absolute grounds for refusal of registration is the fact that
the trade mark is descriptive of the goods and/or services for which it is to be registered, or that it is generic for those goods/services, or otherwise non-distinctive and should therefore be free for everyone in that line of trade to use. In this context, the decision that WARDROBE was, in fact, valid may be seen as surprising.
The reason for this appears to be that the court took a very wide view of distinctiveness (if you have a brand that you can put on a label
or POS material, it seems from this judgment that this will suffice).
While WARDROBE was acknowledged to be a generic term, it was saved from the chop by not being a generic term for the individual goods and services covered by its registration. General conceptual similarity appears to be ok. Looking out of the window, the author wonders whether the sandwich/coffee chain EAT also relied on this to get its trade mark registration through?
However, the flip side for companies registering descriptive
or “generic” brand names as trade marks is that such marks may be
less effective ammunition for use in passing-off claims against similarly-named competitors than a less descriptive mark. The courts continue to take the long-established position that consumers (at law, at least) are less likely to be deceived by similarities between brands consisting of well-known terms, and if there’s no deception, there’s no passing off.