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14 January 2019
On 29 September 2017, Mr Lance Johnston (the applicant) filed a UK application for LIFEWEAR CLOTHING as a UK trade mark for "clothing and headgear".
The application was opposed by Fast Retailing Co., Ltd, the owner of the well-known UNIQLO brand, based on their trade mark registrations and reputation in UNIQLO LifeWear (above right), as well as their unregistered rights in the term LIFE WEAR for clothing.
The opponent had legal representation and submitted a large volume of supporting evidence. This showed that they had clearly been using the team LifeWear for some time, stating that "[t]he LifeWear Mark has been used since March 2013 and is used extensively in the marketing and promotion of the Opponent's business".
The applicant on the other hand was unrepresented and submitted no evidence to support his case. The applicant also, incorrectly, requested that the opponent prove use of its earlier mark. However, as the earlier mark had not completed its registration process more than 5 years before the publication date of the application in issue in these proceedings, it could not be subjected to use requirements, meaning the opposition was based on the goods and services as registered. The importance of that is UNIQLO's earlier rights covered identical goods to those applied for, making it easier for them to argue a likelihood of confusion (or association) between the marks and thus succeed in the opposition.
It was held that the applicant's mark consists of the conjoined words LIFEWEAR and the word CLOTHING. The word CLOTHING in the applicant's mark was naturally found to be descriptive of the goods applied for. In the UKIPO's opinion, the conjoined words LIFE and WEAR play a greater role in the overall impression of the LIFEWEAR CLOTHING mark, with the word CLOTHING [p]laying a lesser role.
The opponent's mark also contained the conjoined words LifeWear which are presented below two red squares. The first square contains, what appears to an English consumer, four white symbols but what we know to be UNI QLO in Katakana characters. The second square contains the letters UNIQLO, in white font. It was held that the overall impression is contained in the combination of the wording and these graphic elements, with the wording and the graphic elements playing equal roles. As a result, the marks were found to share a medium degree of aural and visual similarity and a high degree of conceptual similar given the shared element. There is an argument that LIFEWEAR (and LifeWear) in itself is weakly distinctive of clothing which can be worn for many different purposes or has a long life expectancy. That line of argument would not have supported either parties' case here though since that was the main element of interest to both parties.
Additionally, the opponent had filed evidence to demonstrate that its mark's distinctiveness has been enhanced through use. The opponent had given some examples of its mark being displayed in stores and on product packaging. Various examples were also given of LifeWear being referenced in publications. The opponent, unsurprisingly, achieved a fairly high number of views on its YouTube channel, although the location of the viewers was not known. A number of the exhibits relied upon related to the success and value of the opponent and its UNIQLO brand, rather than its LifeWear brand. Whilst the sales figures provided were not insignificant, they were relatively low given what is, undoubtedly, a clothing market of significant size.
The evidence did not therefore go so far as to show an enhanced level of distinctiveness in UNIQLO's LifeWear mark, but regardless, the UKIPO found that the use of the conjoined words LIFE and WEAR in both marks on identical goods will create an expectation on the part of the consumer that the goods at issue come from the same or economically linked undertakings. It is not surprising that the opposition succeeded in view of the earlier trade mark rights owned by the opponent which contained the term LifeWear and covered exactly the goods applied for.
Additionally, the evidence submitted and the uses made since 2013 only served to support their position. While the case was decided based on a likelihood of confusion (or association) only, the opponent would probably have still succeeded under the other grounds relied upon in the opposition.
One interesting point to note was that the UKIPO in their closing paragraphs cited the EU General Court case José Alejandro SL v OHIM, (case T-129/01). This states that "it is common in the clothing sector for the same mark to be configured in various different ways according to the type of product which it designates". In the case here, the consumer will view the marks as different configurations of the same mark which are being used by a single undertaking. The differences between UNIQLO LifeWear and LIFEWEAR CLOTHING were not sufficient.
For further information on this topic please contact Christopher Benson or Tom Hooper at Taylor Wessing by telephone (+44 20 7300 7000) or email (email@example.com or firstname.lastname@example.org). The Taylor Wessing website can be accessed at www.taylorwessing.com.
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