Back in 2018 Tiffany Parmar applied to register a UK trade mark for ‘Cotswold Lashes by Tiffany’, covering class 3 (cosmetics), class 41 (beauty school services) and class 44 (beauty care).
The jewellery retailer Tiffany & Co opposed this application later that year based on a number of their ‘Tiffany’ UK and EU trade marks.
On 8 January 2020 the UKIPO decided that the marks were visually and phonetically similar to a low degree, but most of the goods covered by the respective marks were identical. Despite dissimilarities between the marks, the IPO concluded that taking into consideration the concept of imperfect recollection, there is a likelihood of confusion on the part of the public, as consumers may be led to believe that the goods and services provided by the beautician are associated with Tiffany.
The beautician was also ordered to pay Tiffany & Co £1,000 as a contribution towards costs.
This is not a surprising decision, as there have been numerous other cases where big brands succeeded in forcing smaller businesses to change their branding (for example, Hugo Boss has forced a small Welsh brewery Boss Brewing to change their branding last year).
It might be tempting to choose a name similar to the famous brand, but it is important to be aware that there are a number of options open to trade mark owners when their brand has been used or imitated by a third party, which potentially include trade mark infringement, passing off, unfair competition and copyright infringement. Therefore, the businesses need to weigh up the advantage achieved by imitating the famous brand and potential costs of defending a claim and being forced to change the name and branding.
Briffa are experts in all aspects of trade mark law and practice. Getting legal advice on the brand name will allow you to reduce the risk of wasting thousands in legal fees on defending the trade mark oppositions and then re-branding and instead invest it in your business.
If you would like to discuss how best to obtain protection for your brand please do not hesitate to get in touch with us on [email protected] or 020 72886003 and one of our specialist IP lawyers will be happy to have a consultation with you without charge.
Anastasia Troshkova, Solicitor