BACKGROUND

Etincelle Paris International Group Limited ("Etincelle") was the owner of a Community Trade Mark ("CTM") Registration for the ALEXANDER WANG trade mark in relation to "bleaching preparations and other substances for laundry use; cleaning polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices" in Class 3.

The fashion designer, Mr Alexander Wang ("Wang") applied to invalidate the registration, on the basis that it was filed in bad faith.

OHIM's Cancellation Division initially declared the registration invalid. In particular, the Cancellation Division found:

  1. Etincelle had applied for a trade mark which was also the name of a well-known designer;
  2. The application was filed for goods in Class 3, which suggested an intention to exploit the name and repute of a famous designer for commercial gain;
  3. Etincelle has also applied to register other famous fashion names such as ISABEL MARANT and GUISEPPE ZANOTTI in relation to Class 3 goods, and had not provided any explanation for its reasons for doing so; and
  4. The evidence that Wang was well-known in fashion industry in the EU prior to the filing date was compelling.

Etincelle appealed the decision, arguing that the onus was on Wang to prove bad faith and that he had not done so to a sufficient degree.

BOARD OF APPEAL DECISION

The  Board of Appeal dismissed the appeal and upheld the Cancellation Division's decision that the trade mark was filed in bad faith.

The Board was particularly impressed by the evidence filed by Wang to show his fame and reputation in the ALEXANDER WANG name and mark in the EU and worldwide prior to the filing date. This included press articles from well-known fashion publications, details of prizes won, celebrities wearing ALEXANDER WANG branded clothing and extensive sales and marketing via department stores and his own website. Expressions used in the press were especially persuasive, with descriptions such as "fashion wunderkind"; "26 year old prodigy"; "man of the moment"; "rising star" being used. Given the longstanding and widespread use of the ALEXANDER WANG mark by Wang, the Board found that it was more than probably that Etincelle had knowledge of the mark at the time of filing the application.

The Board also noted that the goods claimed in Class 3 were in an adjacent market segment to the fashion industry – it is common practice for designers to extend their lines into cosmetics and Wang had already shown evidence of extension into accessories such as sunglasses, bags and jewellery.

The name ALEXANDER WANG was considered by the Board to be unusual, since it comprised a multicultural juxtaposition between the European name ALEXANDER and the Asian surname WANG. Since both names have very different geographical and cultural origins, the Board did not consider it was a simple coincidence that Etincelle had applied to register that exact combination.

The fact that Etincelle had also applied to register other well-known fashion names as trade marks did not by itself indicate bad faith, but since it had not provided any explanation to justify these actions this signalled that it may have dishonest business intentions.

Finally, the facts that Etincelle had not solicited payment from Wang and had not used the mark did not preclude a finding of bad faith.

For the above reasons, the Board considered that Etincelle had acted in a manner that any reasonably commercially minded person would consider falls short of standards of acceptable commercial behaviour. Etincelle's registration was therefore declared invalid on the grounds of bad faith and the appeal was dismissed.

COMMENT

This is a positive outcome for Mr Wang and the fashion industry generally, where the trend of using a person's given name as a brand is prevalent and individual designers are recognised and lauded for their creations.

The problem of trade mark squatters and bad faith applications tends to be more commonplace in developing markets such as China and South America, but this case serves as a timely reminder to designers that these issues can also occur in more developed regions. It is therefore important to ensure that a trade mark is protected in relation to the designer's current and anticipated core goods and services.