Alexander Wang is a famous fashion designer and known for its urban designs. A well-known name in fashion and also a well-known trademark. He registered wisely its name in the US, Japan, EU and China in 2007. This trademark covers clothing and handbags.
This registration could however not prevent that a company on the British Virgin Islands applied for the trademark Alexander Wang in the EU for class 3 products. Of course, Alexander Wang filed a cancellation action. As cosmetics etc. are not similar to clothing etc. this cancellation action was based on bad faith. Many evidence was provided about the fame of Alexander Wang.
The OHIM grants this cancellation action while it states that it is remarkable that of all the names that could have been chosen by the CTM proprietor, it happened to be the unique name of a well-known fashion designer. Moreover, this mark has been filed for products in class 3, which are products that could easily been exploited with this name. Moreover, also other fashion names have been filed by this company. The statement of the company that this is a mere coincidence is not very plausible, according to the OHIM.
After this rather clear rejection, the CTM proprietor files an appeal. Some formal aspects have been put forward (relating to new evidence for example) as well a the argument that there is no link between the parties (which should exist otherwise a basis on bad faith would not meet the legal criteria). The Board of Appeal dismisses the new evidence argument as the new evidence seemed to be relevant and the stage of the proceedings did not preclude such new evidence.
Moreover, although there must be at least a presumption of knowledge with the proprietor, this is only one of the factors according to the Board of Appeal and this does not exclude the possibility that shown use and reputation of a sign outside the EU may be a factor to be taken into account. In view of the reputation of Alexander Wang, the Board of Appeal is of the opinion that it is more that probable that the proprietor had knowledge of the earlier sign. In view of all circumstances, the application is likely be done in bad faith, therefore, the Appeal is rejected.
This decision is of course good news for famous people. However, prevention is better than the cure.
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