Who’s the lucky lady?
The decision went for the Opponent, reports Sophie Soeting. O/749/19, MILLIONAIRE LADY (Opposition), UK IPO, 9th December 2019
This case concerns a UK trade mark application for Millionaire Lady in class 3 in relation to perfume oils and sprays, essential oils and household fragrances (the Opposed Mark). Puig France, Société par Actions Simplifiée (Puig) opposed, relying on four EU trade mark registrations, all registered in class 3 (the latter two have broader specifications):
- A word mark for LADY MILLION;
- A stylised mark for LADY MILLION;
- A stylised mark for LADY MILLION LUCKY, including the words PACO RABANNE; and
- A word mark for LADY MILLION EMPIRE.
Puig has used the LADY MILLION marks in relation to a Paco Rabanne women’s fragrance collection since 2010 in the UK, with more than 2.6 million units sold between 2014 and 2018, at a turnover of around £80m.
Puig opposed on the basis of s5(2)(b) of the Trade Marks Act 1994 (likelihood of confusion), s5(3) (unfair advantage, detriment to distinctive character or reputation) and s5(4)(a) (passing off).
In relation to passing off, Puig’s initial reliance on use in relation to “perfumery, shower gel and body lotion” was restricted to “perfumery” during the evidence rounds.
Likelihood of confusion
The term “perfumery” in Puig’s specifications was found to be broad enough to include the perfume oils, sprays and essential oils in the Opposed Mark, making them identical. While the similarity between perfumery and household fragrances was only superficial, Puig’s third and fourth marks did include “household fragrances”.
Despite the different positioning of the words in the competing marks, the Hearing Officer (HO) reached the conclusion that the Opposed Mark and Puig’s first two marks were:
- Visually similar to a well above medium degree (noting that the goods would likely be selected by predominantly visual means);
- Aurally similar to a fairly high degree; and
- Conceptually similar to a fairly high degree.
Despite their “mild laudatory connotations”, Puig’s marks had at least a medium degree of inherent distinctive character, and its evidence confirmed that they had obtained a high degree of distinctive character. The HO therefore concluded that there would be direct (and indirect) confusion in relation to the first two Puig marks (except in relation to household fragrances), and also in relation to the LADY MILLION EMPIRE mark.
Other objections
Given the very clear position taken on the likelihood of confusion, the HO did not consider the alternative grounds of opposition in detail, instead referring to a range of recent Appointed Person and Court decisions concerning procedural efficiency. This included BritanniaMed (BL O/173/19), in which the Appointed Person said the approach to this issue should be considered in an appropriate case. For the benefit of any appellate body, therefore, the HO set out only briefly the relevant case law and the basis of its decision, finding that the opposition had been made on those grounds.
Key points
- It is important to consider which goods and services you should rely on during opposition proceedings, particularly for passing off – including during evidence rounds
- This decision is a fairly standard assessment of the likelihood of confusion test in the context of consumer goods where the visual assessment is key
- Procedural efficiency, and whether Hearing Officers should address all issues that require a finding of fact, requires consideration in an appropriate case