Class 46 is grateful to Anthony Van der Planken and Thierry van Innis (Van Innis & Delarue) for drawing our attention to a hot-off-the-press decision of OHIM's Second Board of Appeal in Case R 3135/ 2014-2 Etincelle Paris v Alexander Wang.  

In this decision the Board examines the (in)validity of the trade mark application ‘Alexander Wang’ for perfumeries and cosmetics in Class 3: this application was not filed by the famous American fashion designer but by Etincelle Paris, whch Anthony and Thierry describe as "an obscure entity from the British Virgin Islands".

The real Alexander Wang filed a request for a declaration of invalidity, alleging Etincelle’s bad faith at the moment of filing the application within the meaning of Article 52(1)(b) of the Community Trade Mark Regulation. Both the Cancellation Division and the Board of Appeal upheld the request. The Board essentially inferred bad faith from

(i) the fact that Alexander Wang was widely known in the European Union at the time of filing, and that, consequently, it may be presumed that Etincelle was aware of the use of this sign,

(ii) the fact that the name concerned is quite unique due to its multicultural combination and

(iii) the fact that Etincelle also filed other trade mark applications for names of contemporary well-known fashion designers, such as Pierre Hardy, Philippe Plein and Isabel Marant, both in Europe and in China.

This being so, Etincelle’s trade mark was declared invalid in its entirety.

Anthony and Thierry acted for Alexander Wang in this action.