TOMMY get your gun

The choice of the right reasons to object to someone’s use or registration of a trade mark is essential – it goes without saying that it can make the difference between a win and a loss.

So if you were faced with the marks TOMMY and TOMMY HILFIGER for clothes versus a later application for the mark TOMMY DILLINGER for clothes?  You might expect Tommy Hilfiger to win. Do you think the marks are  confusingly similar?  The UK Trade Mark Office didn’t think so.

The marks TOMMY and TOMMY HILFIGER are reasonably well known in the UK (as well as elsewhere).  As soon as I saw the mark TOMMY DILLINGER was the subject of the case, I knew who would have opposed.  Now, I know that is not the test (some would say I have a little more interest – and hopefully knowledge! - than the man in the street), but you would think that gives a clue as to what the answer should have been.

Unfortunately, it seems that Tommy Hilfiger Licensing missed a trick by not including a claim that their mark has a reputation, and that the TOMMY DILLINGER mark would take advantage of that reputation to sell more clothing.  That would have seemed the overarching “story” that the attorneys could have sold.

I’ll be interested to see whether this one goes any further – it may well be that Tommy Hilfiger missed the boat (no doubt a catamaran filled with beautiful young things) and will have to put up with TOMMY DILLINGER.

It was interesting that Tommy Hilfiger also seemed to put in irrelevant information (most of the legible and dated info was from the wrong time period) and their turnover figures may not have been just for clothing.  Fortunately for them, this wasn’t challenged strongly by the other side.  If you want to read the whole case it is here http://bit.ly/7yMlZB