New ranges of goods introduced by retailers that include fashion accessories such as sunglasses, jewellery and hair accessories may not be covered by existing trade mark registrations for "clothing, footwear, headgear". A European Community trade mark case (Case T-363/08 and Case T-364/08 2nine Ltd v OHIM 24 March 2010) has decided that "fashion accessories" did not fall within the scope of an existing trade mark registration for "clothing, footwear, headgear".

In 2005, Pacific Sunwear of California Inc. filed two Community Trade Mark Applications for two figurative signs featuring NOLLIE. Pacific sought the registration of marks for various goods including: "sunglasses" (class 9); "jewellery, namely bracelets, rings, necklaces, watches, belly chains, chokers, earrings" (class 14); "men, women and children's apparel [etc]" (class 25); and "belts, buckles, barrettes, hair pins, hair clips, hair scrunchies" (class 26).

2nine Limited opposed the applications based on earlier trade mark registrations and a UK trade mark application for the word mark NOLI in various classes, including class 25 for "clothing, footwear, headgear".

The oppositions were originally upheld on the basis of likelihood of confusion because of the identical and similar nature of the goods and the fact that the signs looked and sounded similar. Pacific appealed to the Board of Appeal, which decided that the goods, including sunglasses and jewellery and hair accessories, were dissimilar to the goods covered by 2nine's registrations for "clothing, footwear, headgear". 2nine's subsequent appeal to the General Court failed.

The net result is that 2nine could not rely on its existing trade marks to prevent Pacific's new trade mark applications covering the fashion accessories. The General Court looked at the nature, intended purpose and method of use, which differed. It also found that the disputed goods did not compete, nor were they complementary to, items of clothing. 2nine had also argued that sunglasses, jewellery and hair accessories, and clothing, footwear and headgear, were often produced by the same manufacturer, and that the distribution channels were identical. However, no evidence was provided by 2nine and the Court did not therefore consider its argument.

RPC comments

  • Retailers should check whether their existing trade mark registrations cover new ranges of goods
  • Fashion retailers in particular should consider whether they may require additional trade mark protection for accessories
  • Brand owners should review their trade mark portfolios regularly with their advisers to ensure that their branding is properly protected
  • If parties do become involved in trade mark disputes, they must ensure that all of their arguments (even those they may consider self-evident) are backed by appropriate evidence