Giorgio Armani SpA v Sunrich Clothing Ltd

In opposition proceedings, the registrar must determine the dispute actually raised by the opponent. Where opposition succeeds only for some goods or services, registration must be refused only to that extent, consistently with Article 13 of the Trade Mark Directive (89/104). The applicant must receive a fair and effective opportunity to formulate the remaining specification; an unconditional amendment made prematurely is not necessarily required.

On an appeal by way of review, the court will not substitute its own assessment for a hearing officer’s multifactorial evaluation of similarity and confusion absent an error of principle.

Giorgio Armani SpA appealed from decisions of the Registrar’s hearing officer refusing protection in the United Kingdom for the mark AX in Class 25. Sunrich Clothing Ltd opposed the application on the basis of its AXE mark, but the opposition was limited to clothing for men and boys.

The hearing officer found the goods identical or similar, the marks visually similar and aurally identical, and a likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994. She refused protection for all Class 25 goods. The appeal concerned both the merits of that assessment and whether the limited opposition had been given proper effect.

1. The appeal on similarity and confusion was dismissed. The appeal was by way of review, so the court could intervene only for an error of principle. The hearing officer had conducted the required global assessment, considering the visual, aural and conceptual similarity of AX and AXE, the similarity of the goods, the average consumer and imperfect recollection.

2. The hearing officer was entitled to find that AX might be pronounced as a word rather than an acronym. The evidence showed use of AX with a separator in the A|X Armani Exchange mark, but did not establish how consumers pronounced AX without the separator.

3. The hearing officer was also entitled to find that “Ax” could be known as an alternative spelling of “Axe” to some consumers. The conceptual similarity therefore formed part of the overall assessment.

4. The procedural appeal succeeded. The amended Notice of Opposition and subsequent Registry correspondence established an opposition limited to men’s and boys’ clothing. The hearing officer had decided more than the dispute required by refusing protection for all Class 25 goods.

5. Article 13 of the Trade Mark Directive (89/104) required refusal to cover only the goods or services affected by the successful opposition. The registrar had to adopt a fair procedure capable of determining the residual specification. A premature unconditional amendment was not a fatal prerequisite.

6. The issue of the extent to which the application could proceed was remitted to the hearing officer, subject to further submissions on the appropriate procedure.

• High Court (Chancery Division): appeal from the hearing officer’s decisions dated 21 April 2010 and 26 May 2010. The merits challenge failed, but the procedural challenge succeeded in part and the residual Class 25 specification was remitted for determination.