Trade mark decision

BL Number

O/041/00

Decision date

14 February 2000

Hearing officer

Mr M Knight

Mark

ABERCROMBIE & FITCH

Classes

25, 42

Applicants

A & F Trade Mark Inc

Opponents

J & J Crombie Ltd

Opposition

Sections 9, 10, 11 & 12 of the Trade Mark Act 1938 (as amended)

Result

ABERCROMBIE - Opposition succeeded under Section 10. Failed on Section 11 and 12 grounds.

ABERCROMBIE & FITCH - Opposition partially successful under Section 10 (Disclaimer to be entered in Respect of ABERCROMBIE). Failed on Section 11 & 12 grounds.

Points Of Interest

• In a parallel decision under the Trade Marks Act 1994 issued on the same date, 14 February 2000, the Hearing Officer decided that ABERCROMBIE was not barred from registration by the provisions of the new Act as it was not a common surname. The opponents appealed that decision to the Appointed Person. In his decision dated 21 March 2001 the Appointed Person upheld the Hearing Officer's decision to accept ABERCROMBIE for registration and distinguished the different approaches under the old and new Trade Marks Acts.

Summary

As this application was proceeding in Part B of the Register the Section 9 ground was irrelevant and was dismissed by the Hearing Officer.

As regards the Section 10 ground the opponents filed evidence from Scottish Telephone Directories to show that ABERCROMBIE was a relatively common surname in Scotland in that it appeared 58 times in the Glasgow Telephone Directory. As this figure was higher than that used in the guidelines applied in the case of surname marks, the Hearing Officer found that the opponents were successful in their opposition to the ABERCROMBIE mark.

As the opponents had provided no information about the FITCH element of the combined mark ABERCROMBIE & FITCH the Hearing Officer indicated that if the applicants entered a disclaimer in respect of the ABERCROMBIE element of the mark, these two applications would be allowed to proceed in Part B of the Register and opposition would fail.

As regards the grounds under Sections 11 and 12 of the Act the opponents' opposition was based on their ownership of registrations in Classes 24 and 25 for the mark CROMBIE and they also provided details of an extensive reputation and use of this mark in relation to the manufacture and sale of high quality woollen clothes.

Under Section 12 the Hearing Officer determined that the applicants goods in Class 25 were identical to the opponents goods in the same Class and there was a similarity of goods and services in relation to the applicants Class 42 application where design services were included. The Hearing Officer then compared the opponents' CROMBIE mark with the applicants marks. In relation to the ABERCROMBIE mark the Hearing Officer noted that the opponents mark was contained therein and that there was some visual similarity. However, he considered the respective marks to be quite different and did not believe that the public would associate them in any way. It followed that there would be no confusion with the applicants ABERCROMBIE & FITCH mark. Opposition failed on the Section 12 ground.

Under Section 11 the Hearing accepted that the opponents had a reputation in their mark. However, he considered the respective marks to be so dissimilar that there was no likelihood of deception and confusion of the public if the applicants used their mark. Opposition failed on the Section 11 ground.

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