MARIE CLAIRE - 157500

• Administrative Decision Number: 157500
• Date: 20 January 2003
• opponent: MARIE-CLAIRE ALBUM

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TRADE MARKS ACT, 1963

Decision in Hearing under Section 26

IN THE MATTER OF an application for registration of Trade Mark No. 157500 and

in the matter of an Opposition thereto.

BRANDWELL (IRL) LIMITED Applicant

MARIE-CLAIRE ALBUM Opponent

1. On 27 January, 1993, HARTSTONE IRELAND LIMITED, an Irish company of

Unit 8/9 Bellevue Industrial Park, Finglas, Dublin 11, Republic of Ireland,

predecessors in title of the Applicant, made application (No. 93/0327) to register

the words “MARIE CLAIRE” as a Trade Mark in Part A of the Register in Class

25 in respect of a specification of goods that was amended in the course of the

examination of the application to read as follows:

“hosiery; stockings; socks, pantyhose, tights and

underwear; lingerie; sleeping garments; knitted wear”

2. The Application was subsequently advertised as accepted for registration in Part A

of the Register under No. 157500 in Journal No. 1753 on 8 February, 1995.

3. Notice of Opposition to the registration of the mark pursuant to Section 26 of the

Act was filed on 10 July, 1995 by MARIE-CLAIRE ALBUM, a French Company

of 11 bis rue Boissy d’Anglas, 75008 Paris, France. The Applicant filed a

counter-statement on 14 March, 1996 and evidence was, in due course, filed by

the parties under Rules 37, 38, 39 and 40 of the Trade Mark Rules, 1963.

4. The Opposition became the subject of a Hearing before me, acting for the

Controller, on 27 June, 2002. The parties were notified on 13 January, 2003 that I

had decided to uphold the Opposition and to refuse registration of the mark. I

now state the grounds of my decision and the materials used in arriving thereat.

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5. In its Notice of Opposition the Opponent stated as follows:

(i) We have for many years and earlier than January 27, 1993, traded and

have a substantial reputation under the Trade Mark MARIE CLAIRE.

(ii) We are the Proprietor of a Trade Mark Registration with the following

particulars:-

T. Mark Reg. No. Date Class Journal Page

MARIE 126216 08/01/88 16 1590 671

CLAIRE

(iii) Our Trade Mark denotes and has long denoted both to the trade and the

public, goods sold by us and distinguishes and has long distinguished such

goods from the goods of other merchants and traders.

(iv) The proposed use of the Trade Mark which the Applicant has applied to

register is calculated to deceive and cause confusion and is otherwise

disentitled to protection in a Court of law and in accordance with the

provisions of Section 19 of the Trade Marks Act, 1963, should be refused

registration.

(v) The said Trade Mark which the Applicant has applied to register is

identical or so nearly resembles our Trade Mark as to be likely to deceive

or cause confusion to our Trade Mark which is already on the Register. In

accordance with Section 20 of the Trade Marks Act, 1963, registration of

the Trade Mark should be refused registration (sic).

(vi) The said Trade Mark which the Applicant has applied to register is

calculated to deceive and to lead to the Applicant’s goods being passed-off

or mistaken for goods sold by us and in which we trade as manufacturers

and merchants.

(vii) There exists a likelihood of confusion on the part of the public which

includes the likelihood of association with our Trade Mark.

(viii) Our Trade Mark has such a reputation in the State and the use of the

MARIE CLAIRE Trade Mark without due cause would take unfair

advantage of, or be detrimental to, the distinctive character or the repute of

our Trade Mark.