I'M MIDDLE CLASS...AND I'VE GOT THE T-SHIRT TO PROVE IT

Today Jacob J delivered a decision partially revoking certain ANIMAL marks. The revocation was the result of a counter-claim brought by Medici Limited when H Young (Operations) Limited, the owner of the ANIMAL mark for certain surfing themed items and clothing challenged Medici’s use of ANIMALE for sedate clothing for more mature ladies.
The judge said that partial revocation must be judged according to a fair description that would be used by the average consumer for the products in which the mark has been used by the proprietor (following ESB). In order to determine this one should assume:

“that the average consumer is told that the mark will get absolute protection ("the umbra") for use of the identical mark for any goods coming within his description and protection depending on confusability for a similar mark or the same mark on similar goods ("the penumbra"). A lot depends on the nature of the goods – are they specialist or of a more general, everyday nature? Has there been use for just one specific item or for a range of goods? Are the goods on the High Street? And so on. The whole exercise consists in the end of forming a value judgment as to the appropriate specification having regard to the use which has been made.”

As a result, an attempt to limit the surfing company’s mark by image to “surf-type goods” to younger consumers was rejected because consumers would not distinguish between types of clothes in such a way. Similarly, consumers do not make a distinction between types of garments (e.g. jeans v. dresses) for this purpose so a claim for “clothing” without further qualification was fine.
Certain of the other claims were narrowed however. Most interesting is the claim for boxes and packaging containers. The judge said that use of the mark on the packaging which goods bought by the trade mark owner’s customers does not count as trade mark use because there is not trade in the packaging and so the registration for those items was removed.
The judge’s keen fashion sense demonstrated in describing Medici’s clothing is worthy of note:

“The garments are simultaneously elegant and casual, the sort of thing that might be worn at a wedding, a casual dinner party of the middle class, perhaps particularly in summer or on the promenade in Nice or Torquay. Much of the range is designed to be coordinated, that is to say one item may well go with another, though of course many women buy clothes which can be used either individually with other garments. The garments are not very expensive.”

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