January 2006
‘Sexy Little Things’ Scrap Over the Right to Name Their Knickers
Attention all interested men; a catfight appears to have broken out between models and underwear icons over the naming of their smalls.
Sport’s Illustrated swimsuit model Audrey Quock wished to launch a range of lingerie called "SEXY LITTLE THINGS" however underwear giants Victoria’s Secret objected on the basis that they had prior use of the trade mark despite it being unregistered at the time.
Quock and her business partner Ronit Menashe claimed to have come up with the name “Sexy Little Thing, Sexy Little Things” in July or August 2004 but could not show use despite a domain name (www.sexylittlethings.com) having been registered on 31 August 2004. They subsequently filed a trade mark application in September 2004 for underwear and clothing.
Victoria’s Secret claimed to have conceived the name “Sexy Little Things” at sometime between March and June 2004 before beginning to use it in their catalogue in late July 2004 and showed evidence of this use but did not file their trade mark application until November 2004 some two months after Quock.
Quock had already commissioned advertising material and had sent manufacturer’s details of proposed labelling by the time that Victoria’s Secret sent a letter before action threatening court proceedings against the knicker market newcomers. As a result Quock applied to the New York Court for a declaration of non infringement of Victoria’s Secret’s purported trade mark.
The US court held that Victoria's Secret had acquired priority in the use of the trademark "SEXY LITTLE THINGS" because it had used the mark on underwear sold online and through its shops and catalogues since July 2004. Therefore Victoria’s Secret’s unregistered rights in the name predated those of Quock and took precedence irrelevant of Quock’s subsequent trade mark application.
BRIFFA Comment:
When choosing a brand for a range of clothing or for any goods or business it is not always enough to check the trade mark register for identical marks. Searches should be carried out for similar marks and also for those parties who may have unregistered rights. Briffa can advise on registrability of trade marks and can assist with searching of various international registers. A good place to start with searching for unregistered rights can be search engines on the internet but again this alone is not conclusive. Although it means some degree of expenditure before launch of the brand in the long run it can save money if it means avoiding a costly litigation and potential rebrand.
Sarah Jeffery
sarah@briffa.com