Home / White on White – Off White Unsuccessful in Trade Mark Opposition
8th May 2024
Off-White LLC (the “Opponent”), a fashion house founded in 2013 by Virgil Abloh, has been unsuccessful in opposing a trade mark application (the “Application”) made by Torf Corporation (the “Applicant”).
In a recent decision, the UK Intellectual Property Office concluded that the Application may now proceed to registration.
BACKGROUND
The Applicant applied to register a mark (the “Applicant’s Mark”), which consisted of the wording “ON” with stylisation to the “O” to resemble an electronic on/off switch and “WHITE” in smaller font underneath. The wording was in dark grey and inside a light grey circle.
The Opponent relied upon two trade mark registrations, being the word mark “OFF-WHITE” (the “First Earlier Mark”) and a device mark which consists of “OFF-WHITE™” surrounded by a double hexagonal border with an identical double hexagonal border below with no wording inside (the “Second Earlier Mark” and together, the “Opponent’s Marks”).
The Applicant’s Mark was applied for in relation to oral care-focused cosmetic and toiletry products, such as toothpaste.
The Opponent opposed the Application on two grounds.
The Opponent’s Marks are registered in relation to various goods and services (such as, for example, clothing and footwear), however, the IPO deemed that, as well as representing the Opponent’s strongest case in relation to this ground, the competing goods that the First Earlier Mark and the Second Earlier Mark are registered in relation to are cosmetics and toiletries and cosmetics and non-medicated toiletry products respectively.
The likelihood of confusion must be appreciated globally, taking account of all relevant factors, such as the degree of similarity between the marks and the goods or services, through the eyes of the average consumer. In relation to the above goods, which are not particularly expensive, the average consumer is likely to purchase them relatively frequently and most likely from the shelves of a shop or online. Therefore, the average consumer is likely to pay a medium degree of attention when selecting the goods and, additionally, visual considerations will be of paramount importance when selecting the goods.
For a likelihood of confusion to exist, there must be a risk that the average consumer might believe that the goods provided by the Applicant bearing the Applicant’s Mark come from the Opponent or that the Opponent and the Applicant are economically-linked undertakings.
In comparison to the Applicant’s Mark, it was held that the Opponent’s Marks are aurally similar to a medium degree whilst, owing to the only conceptual similarity being the word “WHITE” which is non-distinctive in relation to the goods set out above as it will be understood to be referring to the whitening effect of the product, they are conceptually similar to a low degree. Furthermore, in comparison to the Applicant’s Mark, the First Earlier Mark was held to be visually similar to a medium degree and the Second Earlier Mark to be visually similar to a low degree due to the additional differences, such as the font and double hexagonal borders.
The goods specified in the Application were held to be identical to those which the Opponent’s Mark are registered in relation to. This is because all of the goods specified in the Application are included in the more general categories of the Opponent’s Marks (i.e. cosmetic or toiletry products).
The Opponent’s Marks were deemed to be inherently distinctive to between a low and medium degree due to the inclusion of “OFF” as reference to a colour other than a clean white is unusual for the goods described above. The Opponent filed considerable evidence relating to its turnover, advertising and marketing expenditure, high-profile collaborations and coverage in popular publications, however, it was held that the Opponent’s Marks had not acquired enhanced distinctiveness through use as most of the evidence filed related to goods other than cosmetic and toiletry products.
After consideration of the above factors, the IPO decided that there was not a likelihood of confusion and, resultingly, the Opponent was unsuccessful under this ground. This was, primarily, due to the visual differences between the Opponent’s Marks and the Applicant’s Mark, the predominantly visual purchasing process in relation to the goods and the fact that the common element of “WHITE” is non-distinctive in relation to the goods.
The Opponent also, relying only on the First Earlier Mark, opposed the Application on the basis that the First Earlier Mark has a reputation in the United Kingdom and use of the Applicant’s Mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the First Earlier Mark. Reputation, for this purpose, means known by a significant part of the public concerned by the goods or services that the First Earlier Mark is registered in relation to.
Under this ground, as there is no requirement for the goods or services to be similar or identical, all of the goods and services that the First Earlier Mark is registered in relation to can be considered. It was held that the First Earlier Mark has a reasonably strong reputation for clothing and footwear.
The Opponent was unsuccessful under this ground as it was held that, due to the differences between the First Earlier Mark and the Applicant’s Mark (as detailed above) and the distinct goods of the respective parties, it is unlikely that the Applicant’s Mark would call the First Earlier Mark to the mind of the average consumer and, even if it did, it would be too brief to give rise to damage.
The Opponent’s beauty collection was launched in around April 2022. The Application was filed on 26 August 2022. Therefore, it is not surprising that the Opponent was unable to establish enhanced distinctiveness in relation to the Opponent’s Marks by the relevant date, being 26 August 2022, and absent that, it was always going to be difficult for the Opponent to establish a likelihood of confusion.
To overcome the visual differences between the First Earlier Mark and the Applicant’s Mark, the Opponent would likely needed to have established that the First Earlier Mark had a reputation at the relevant date for goods or services that it is registered in relation to that are similar to those specified in the Application.
This decision is understandable in light of the balance that trade mark law must strike between the monopoly granted by a trade mark registration and the rights of third parties to use similar marks, as well as the non-distinctiveness of “WHITE” in relation to the relevant goods.
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