Giordano - 205701

Date24 March 2017
Administrative Decision Number205701
opponentWalton International Ltd
SectionTrade Marks Act, 1996 - 2008-2017
Decision in Hearing
In the matter of an application for the revocation of the registration of Trade Mark No.
205701 and in the matter of the registered Proprietor’s opposition thereto.
VERWEIJ FASHIONB.V. Applicant for Revocation
The registered trade mark
1. Walton International Limited (hereinafter “the Proprietor”) of Offices of Royal Bank of
Canada Trust Company (Cayman) Limited, George Town, Grand Cayman, Cayman
Islands, is the registered Proprietor of the trade mark GIORDANO. The mark is
registered under No. 205701 in respect of bags, handbags, leather cases, travelling
bags, shoulder belts; briefcases, file cases, attaché cases; purses, key bags,
passport cases, cheque cases, leather bags, suitcases, pocket wallets, bill cases,
bags for money, clips for keys; umbrellas, parasols, canes, folders (leather), leather
cases for credit cards, knapsacks, rucksacks, valises, satchels, school bags,
pouches, haversacks.” in Class 18 and clothing, footwear, headgear.” in Class 25.
2. The application for registration of the mark was filed under the Trade Marks Act,
1996 (the “Act”) with an application date of 1 September 1997, which is deemed to
be the date of registration. Publication of the registration of the mark appeared in
Journal No. 1872 on 8 September 1999.
The application for revocation
3. On 13 October, 2015 Verweij Fashion B.V. of Keienbergweg 103, NL 1101 GG
Amsterdam, The Netherland, (hereinafter “the Applicant”) made an application for
the revocation of the registration pursuant to the provisions of Section 51 of the Act.
The Applicant seeks revocation on the grounds that the GIORDANO trade mark has
not been put to genuine use in the State, by or with the consent of the Proprietor, in
relation to any of the goods for which it is registered within the period of five years
following the date of publication of the registration (i.e. 8 September 1999) and there
are no proper reasons for this non-use. Further, and in the alternative, the Applicant
seeks revocation of the trade mark on the basis the mark has not been put to
genuine use in the State, by or with the consent of the Proprietor, in relation to any
of the goods for which it is registered, for an uninterrupted period of five years and
there are no proper reasons for this non-use.
Notice of Opposition
4. On 22 April 2016 the Proprietor filed a Notice of Opposition to the application
together with evidence supporting its claimed use of the mark; such evidence
consisting of a Statutory Declaration, dated 20 April 2016, of Mark Alan Loynd, a
Director and the General Counsel and Head of International Brand Collaborations of
the Proprietor, and sixteen accompanying exhibits marked MAL1 to MAL16, and a
Statutory Declaration of Notan Hassanand Tolani, Managing Director of Solar Time
Limited and two accompanying exhibits marked NHT1 and NHT2.
5. In the opening paragraphs of his Statutory Declaration Mr. Loynd provides the
background to the Proprietor’s business. He attaches printouts of the Giordano
Groups’ Hong Kong website evidencing the establishment of the Giordano Group in
1981 in Hong Kong and a list of its subsidiaries (Exhibit MAL1), an extract from the
Giordano Group’s Annual Report for 2014 (Exhibit MAL2) and other extracts from
the aforementioned Hong Kong website showing the Giordano family of brands
(Exhibit MAL3), though none of these three exhibits contain any reference to Ireland.
6. Mr. Loynd states that on 1 May 1997 Giordano Limited, as the franchisor, entered
into a franchise and distribution agreement with Giordano (UK) Limited, as the
franchisee, and Whittard of Chelsea Plc which held a controlling interest in Giordano
(UK) Limited. The Agreement granted the franchisee an exclusive licence to use the
GIORDANO marks and an exclusive right to distribute the Giordano Group’s goods
and services under and by reference to the GIORDANO marks in the United
Kingdom and Ireland. He attaches at Exhibit MAL4 details of the agreement and
related materials.
7. He states that based on the Agreement a retail shop under the GIORDANO marks,
located at 9 Peascod Street, Windsor, the United Kingdom, was opened in 1997 for
the distribution and offer of goods and services under the GIORDANO marks in the
UK. He attaches at Exhibit MAL5 a copy of the application for planning permission
for the retail shop and related materials, including a photograph of the shop front.
8. Mr. Loynd states that Giordano Limited supplied goods under the Agreement and
attaches at Exhibit MAL6 copies of a range of invoices, dated from 7 May 1997 to 27
June 1997, for clothing, belts, rucksacks, wallets and umbrellas, which he states all
bore the GIORDANO mark, and which show the goods were sent by Giordano
Limited to Whittard of Chelsea Plc in London. He states that, due to commercial
reasons, the franchise under the Agreement ended in around 1998 or 1999.
9. He states that despite the termination of the franchise, the Giordano Group
continuously made efforts to create and maintain brand awareness and market
share of GIORDANO branded goods. The Group explored opportunities to co-

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