Tiffany Palmer, a beautician who has been providing beauty treatments to its customers since 2014 filed an application to register the trademark “Cotswold Lashes by Tiffany” before the UKIPO.
Thereafter, Tiffany & Co., believing that a likelihood of confusion will arise between this application and its numerous prior registrations, filed an opposition. Although the applicant argued that she should have a right to use her own name in relation with the services she has been providing for years, the responsible examiner found that consumers may be confused as to the origin of the trademark to be owned by Tiffany Palmer and the goods / services may be connected to Tiffany & Co.
While the UKIPO found the sale figures of Tiffany & Co. “respectable but not remarkable particularly given the huge range of goods and services for which its marks are registered,” it is ruled that consumers are likely to be confused in light of the imperfect recollection test as the word Tiffany can be associated with Tiffany & Co.
The lesson that could once again be taken from this decision among other precedents is to keep in mind that although use of a person’s own name may be deemed within the scope of fair use unless a confusion is created with any other market player, applying to register the same may not always be granted due to a possible conflict with other businesses active in the same field. Therefore; it is important to consider potenti