October 26, 2021
Boohoo for BOOHOO at the UKIPO
Boohoo for BOOHOO at the UKIPO

In April 2020, the UK-based online fashion retailer Boohoo.com UK Limited (“Boohoo”) opposed an application for the mark filed by an individual, Cindy-Lee Village for goods in class 24 covering “silk fabrics” only.


The earlier mark relied upon by Boohoo was  in class 24 covering “textile fabrics” in class 24.


Boohoo based the opposition on the following grounds:

  • Section 5(2)(b) - the respective marks are similar and cover identical / similar goods or services and there is a likelihood of confusion;
  • Section 5(3) - the respective marks are identical/ similar and the later application takes an unfair advantage of or is detrimental to the distinctive character or repute of the earlier mark;
  • and 5(4)(a) - passing off one’s goods or services as those of another.

Unfortunately, for Boohoo, the outcome was a sad one. Having failed to file any evidence on reputation and goodwill, the grounds under Sections 5(3) and 5(4)(a) were struck out. This seems to be a missed opportunity for Boohoo. The company was founded in 2006 and today has 13 of its own brands and is providing retail services in relation to clothing, shoes, accessories and beauty products to customers all over the world. Boohoo is also listed on the London Stock Exchange. There must have been some evidence available to run a reputation argument.


As a result, the UKIPO based its analysis on Section 5(2)(b) alone and the Opposition failed. We mostly agree with the decision based on the grounds available to Boohoo. There were some key points to take away from the decision and also some peculiar ones, for example:


  1. Comparison of goods - The Applicant argued that her goods were for a different target market as her goods are high quality and aimed at “older, high net worth individuals”, whereas Boohoo’s target market is girls/women between the ages of 16 and 25 and they sell “seasonal budget items”. The tribunal reiterated that the quality or price of the respective goods is irrelevant. The assessment is a notional and objective one and “silk fabrics” falls within Boohoo’s protected term “fabrics”.


  1. It is always important to identify the average consumer and the Tribunal held that despite differences in quality or price, the average consumer in this case could include any member of the general public.


  1. Comparison of the marks – the visual and aural comparison was held to be low and medium to low respectively. Conceptually, the view was that BOO on its own is an exclamation or an expression used to surprise someone, whereas BOOHOO refers to the noise of crying or sobbing. So conceptual similarity was held to be low.


  1. Distinctive character of BOOHOO – the Tribunal commented that marks with a high degree of distinctive character are invented words. As BOOHOO is not an invented word, it was held to only have a medium degree of distinctive character, despite having no meaning in relation to the registered goods.


Does that mean APPLE for computers is not highly distinctive? Surely not? Where is the line between a medium and high level of distinctiveness for marks that are not invented words? This is definitely something to think about. If only they had filed evidence to support their reputation ground, they could also argue enhanced distinctive character…    

Fashion /  Trademarks /  Disputes

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