Way back in October 2018 we reported on the plight of Tiffany Palmer a Gloucester beautician who had applied for the trade mark ‘Cotswold Lashes by Tiffany’ for her salon only to receive a cease and desist letter from Tiffany the jeweller. Under the heading ‘6 Lashes for overbearing jeweller’ I said we thought the actions of the jeweller overbearing and that while Tiffany had a legitimate interest in protecting its brand, there was little prospect of the average consumer confusing the Tiffany brand and the lashes salon. Well the dispute rumbled on and has recently been before the UK’s Intellectual Property Office for a decision. While Tiffany & Co have been successful in preventing Ms Palmer from registering her mark, they did not score an outright victory. Here’s why.
Tiffany relied on five earlier UK and European trade marks for Tiffany and Tiffany & Co covering a range of services including cosmetics and educational services. Ms Palmer had applied for beauty services. While Tiffany & Co did not cover cosmetics the Hearing Officer found that cosmetics are complimentary to beauty treatments and that there was a low level of similarity between the goods and services applied for. Next the Hearing Officer found that the trade mark applied for by Ms Palmer had a low degree of similarity both visually and orally.
If I stopped there and asked someone who was not an intellectual property lawyer to now guess the result of these findings I anticipate they would say that Ms Palmer was allowed to register her mark. However, they would be wrong and here’s the clever legal bit that would catch the unwary:
The Hearing Officer found that despite the fact that there was only limited similarity between the Tiffany marks and Ms Palmer’s application, Ms Palmer’s application would be refused anyway because there was no minimum threshold of similarity under trade mark legislation for the likelihood of confusion when considering whether an application should be allowed.
So what does this mean for Ms Palmer? It means she cannot secure a registered mark but it does not mean she cannot carry on using the mark. On the contrary, the Hearing Officer found that based on the evidence which had been provided Tiffany & Co had not shown that their marks had a reputation for, nor would the average consumer equate their brand with cosmetic training courses or beauty therapy. Tiffany & Co’s challenge
on the grounds of passing off failed.
While the above will not raise eyebrows in the
intellectual property community it is not necessarily easy for non-professional users of the trade mark system to understand. This affects the ability of an unrepresented business to make full use of the system and is of course not ideal. Once again it highlights the need for all businesses new to this area to take good advice before they file to save not only unnecessary filing fees but also the money and time which could be lost cost in becoming embroiled in a
trade mark dispute.
