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Armani v Sunrich: when oppositions "over-succeed"
Last November, in the High Court, Chancery Division, England and Wales, Mr Justice Mann issued his ruling in Giorgio Armani SpA v Sunrich Clothing Limited [2010] EWHC 2939 (Ch). The case was an appeal of two decisions of an UK Trade Mark Registry Hearing Officer in respect of limited opposition proceedings brought by Sunrich against Giorgio Armani. Giorgio Armani had applied to extend the protection of their word mark AX to the UK in respect of goods within Class 25, namely “clothing, shoes, headgear”. Armani’s application was opposed by Sunrich Clothing Limited on the grounds of their earlier registration of AXE for “clothing for men and boys” in Class 25. Sunrich’s notice of opposition indicated that their opposition was limited to only goods that fell within “clothing for men and boys.
The Registry confirmed that this was the case. However, in arriving at her decision the Hearing Officer failed to give proper effect of the fact that the opposition was limited and ruled against Armani’s application for all Class 25 goods, not just “clothing for men and boys” in Class 25. The Hearing Officer also held that Sunrich’s grounds of opposition under section 5(2)(b) Trade Mark Act 1994 were made out. Armani appealed the decision. In the High Court, Sunrich argued that Hearing Officers were under no obligation to undertake full blown amendments to specifications in trade mark applications (save for “blue pencilling”) and were instead to take specifications as they found them. Sunrich further submitted that if an applicant wished to amend their specification before determination of the issue they should do so at their own election and by way of an unconditional application to amend. The Court ruled that:
1. the Hearing Officer was entitled to come to her decision in respect of the section 5(2)(b) Trade Mark Act 1994 grounds of opposition;
2. the Hearing Officer’s ruling had failed to give effect to the limited nature of the opposition;
3. as a result of the Hearing Officer’s decision, Armani had been denied their entitlement under Article 13 of the Trade Mark Directive (89/104) to register goods in Class 25 that were not opposed;
4. an applicant who faces limited opposition proceedings in respect of only a restricted class of goods should be afforded the opportunity to amend his application in the event that the opposition is successful; and
5. such an application to amend should not be an unconditional application, as suggested by Sunrich.
The Court would not set down or approve an “overly formalistic method of resolving” a dispute by way of an amendment following successful limited opposition proceedings. Mann J did note, however, that a more proactive case management approach should be taken by Hearing Officers during such proceedings to avoid similar disputes reccurring.
Class 46 thanks Annsley Merelle Ward (Collyer Bristow) for this item
Posted by: Blog Administrator @ 09.22Tags: opposition, amendment of specification,
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