JUDGE PROTECTS CLOTHING CO AGAINST CRIMINAL COMPETITOR

It's a while since the IPKat has scooped up a fresh live case for his readers from the limpid pool of Butterworth's LexisNexis All England Direct subscription service -- but here's a choice one: Criminal Clothing Ltd v Aytan’s Manufacturing (UK) Ltd [2005] EWHC 1303 (CH), a Chancery Division of Christopher Floyd QC, sitting as a deputy judge of the High Court.

Criminal Clothing applied to register as a UK trade mark a figurative representation of the word CRIMINAL for "articles of clothing, headgear, footwear; parts and fittings for the aforesaid goods" in class 25. Aytan opposed, citing a likelihood of confusion with its earlier UK and Community trade marks for CRIMINAL DAMAGE, also in stylised form, for "articles of clothing, boots, shoes, slippers, sandals". Aytan also maintained that, becaue of the goodwill and reputation it enjoyed in those earlier marks, any use of CRIMINAL would be passing off.

The hearing officer found that, given the wide penumbra of protection enjoyed by Aytan's marks, the degree of aural/oral and conceptual similarity between the marks, the identical/closely similar nature of the goods at issue, the traits of the average consumer when purchasing items of clothing, the manner in which the goods were marketed, and allowing for imperfect recollection, there was a real likelihood of confusion and, accordingly, the opposition based on likelihood of confusion succeeded. Criminal Clothing appealed, arguing that (i) the hearing officer equated a likelihood of association with a likelihood of confusion, (ii) his findings did not add up to a likelihood of confusion, and (iii) the evidence of reputation and misrepresentation was inadequate on the passing-off point.

Christopher Floyd QC dismissed the appeal on all grounds -- and that WOULD be that, except for one little thing.

The IPKat notes that the unsuccessful party here had instructed Willoughby & Partners as its solicitors, the very same firm that, it was reported earlier today, Sir Hugh Laddie is joining next month when he hangs up his judicial spurs. And this case raised the issue of "likelihood of association", the topic so beautifully analysed by Sir Hugh in the first UK trade mark infringement case in post-Directive Britain, Wagamama v City Limits [1996] ETMR 23. Merpel adds, "and I thought it was just the prices that were criminal ..."

More criminal clothes here , here and here