MARIE CLAIRE - 237019

• Date: 10 July 2013
• Administrative Decision Number: 237019
• opponent: MARIE CLAIRE S.A. AND BRANDWELL (IRL) LIMITED
• Section: Trade Marks Act, 1996 - 2008-2017

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DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS IN

PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for registration of Trade Mark No. 237019 and in the matter of an

Opposition thereto.

MARIE CLAIRE NETHERLANDS B.V. Applicant

MARIE CLAIRE S.A. and BRANDWELL (IRL) LIMITED Opponents

The Application

1.On 15 October, 1997 (the relevant date), MONTAGUTE COMERCIO E INDUSTRIA DE

TEXTEIS, LDA of Quinta de Santa Maria, Maximinos, 4700 Braga, Portugal made application

(No. 1997/3829) under Section 37 of the Trade Marks Act, 1996 (“the Act”) to register MARIE

CLAIRE as a Trade Mark in respect of the following goods:

Class 32: Clothing, headgear

2.The application was subsequently assigned to MARIE CLAIRE NETHERLANDS B.V. of

Emmalaan 25, 1075AT Amsterdam, The Netherlands by virtue of a Deed of Assignment dated 1

January, 2006 and was then accepted for registration and advertised accordingly under No.

237019 in Journal No. 2082 dated 3 October, 2007.

3.Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was filed

on 2 January, 2008 jointly by Marie Claire S.A. of Avenida De Vall De Uxo, 8, 12004

Castellon, Spain (hereinafter referred to as “MCSA”) and Brandwell (IRL) Limited, of 12

Northwest Business Park, Ballycoolin, Dublin 15, in relation to all the goods covered by the

application. The Applicant filed a counter-statement on 20 February, 2008 and evidence was, in

due course, filed by the parties under Rules 20, 21 and 22 of the Trade Marks Rules, 1996 (“the

Rules”).

4.The opposition became the subject of a hearing before me, acting for the Controller, on 7 June,

2012. The parties were notified 12 February, 2013 that I had decided to uphold the opposition

and to refuse the registration of the mark. I now state the grounds of my decision and the

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materials used in arriving thereat in response to a request by the Opponent in that regard

pursuant to Rule 27(2) of the Rules.

Grounds of the Opposition

5.In the Notice of Opposition the Opponents state that MCSA are the proprietor of the trade mark

MARIE CLAIRE which was adopted for use in Spain in 1960 by MCSA’s predecessors in

business. In 1992 Brandwell commenced selling, in the State under the trade mark MARIE

CLAIRE, hosiery manufactured in Spain by MCSA’s predecessors in business (Aznar). In 1993

the Irish range of MARIE CLAIRE products was extended to lingerie and, in 1994, articles of

swimwear were added to that range. From 1992 to the present time all the hosiery, lingerie and

swimwear products sold by Brandwell in the State under the trade mark MAIRE CLAIRE have

been manufactured either by MCSA or by MCSA’s predecessors in business.

6.At the date of filing of the opposed application the earlierMAIRE CLAIRE trade mark had

been used in the State for over five years and had acquired a significant reputation in the State in

relation to hosiery, lingerie and swimwear as a consequence of the extensive sales effected

under the trade mark in that period.

7.As the Applicant has applied for an identical mark covering identical or similar goods (i.e.

clothing and headgear in Class 25), use by the Applicant of the mark would inevitably lead to

the Applicant’s goods being passed off as or mistaken for the goods sold under the Opponent’s

earlier mark. Therefore the application offends against Section 10(4)(a) of the Act since use of

the mark would be prevented by virtue of the law of passing-off.

8.The Opponents also state that at the date of filing the Applicant was fully aware of the fact that

the earlier MARIE CLAIRE trade mark had, by virtue of its use in the State, come to identify

exclusively hosiery, lingerie and swimwear manufactured by MCSA’s predecessors in business

and sold in the State by Brandwell and that the Applicant was also fully aware of the extent of

the turnover achieved under the earlier MAIRE CLAIRE mark in the State since 1992. As such

the Opponents contend that the application was made in bad faith since, at the date of filing, the

Applicant knew that it could not legitimately claim to be the proprietor of the trade mark

MARIE CLAIRE in Ireland.

9.At the date of filing the Opponents state that the Applicant was also aware of the existence of

Trade Mark Application No. 157500 for MARIE CLAIRE by Brandwell’s predecessor in