Tiffany triumphs in UKIPO opposition proceedings

Posted: 24/01/2020

A UKIPO trade mark ruling earlier this month, involving the famous New York based jewellery company Tiffany & Co, has provided a reminder that an individual does not have an automatic right to use their personal name for commercial purposes.

In the modern world of social media, it is important for brand owners to consider any negative PR consequences arising from their actions. This case has been extensively covered on social media and correspondence from Tiffany & Co has been posted online and reported in various news articles supporting small businesses. Balancing PR with safeguarding intellectual property rights can be challenging.

In April 2018 Tiffany Parmar, the owner of a small Cotswold-based business called ‘Cotswold Lashes by Tiffany’ (previously called Beauty by Tiffany), applied to register her company’s name as a UK trade mark covering classes 3 (cosmetics), 41 (education and beauty school services) and 44 (hygienic and beauty care services). The application was accepted by the UK Intellectual Property Office (UKIPO) and subsequently proceeded to publication for opposition purposes in July 2018.

In October 2018, Tiffany & Co, which was recently acquired by LVMH for approximately US$16.2 billion, filed a formal opposition against Ms Parmar’s application arguing that:

• there was a likelihood of confusion with Tiffany & Co’s senior UK and EU trade mark registrations for ‘Tiffany & Co’ and ‘Tiffany’ in classes 3, 14 and 41 respectively (the ‘Tiffany registrations’);
• use of the application would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the Tiffany registrations; and
• use of the application would amount to passing off of the Tiffany brand.

Tiffany & Co’s evidence sought to show, amongst other things, that the brand had maintained a presence in the UK market for decades, first opening a store in London in 1868 and achieving UK revenues of $981.6 million between 2013 and 2017.

On 8 January 2020, the UKIPO upheld Tiffany & Co’s opposition on the grounds of a likelihood of confusion only, rejecting the other two grounds on the basis that the goods for which Tiffany & Co sought to establish a reputation and/or goodwill (namely, jewellery) were too dissimilar to the cosmetic and beauty care goods and services covered by the application.

In doing so, the hearing officer concluded that there is a chance that consumers might be misled into believing that Ms Parmar’s goods and services ‘are those of [Tiffany & Co] or provided by an undertaking linked to [Tiffany & Co] … as simply a slightly different use of the [Tiffany & Co] marks’. Ms Parmar has since removed the ‘by Tiffany’ element from the name of her company.

Tiffany & Co will naturally be happy with the ultimate outcome of this case but may be disappointed by the hearing officer’s apparent reluctance to acknowledge the full scope of its business and reputation, which may have been grounds for appeal under other circumstances.

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