Charlotte Tilbury TM Limited v Charlotte Tilbury TM Limited

Charlotte Tilbury TM Limited (the applicant) sought to register a trade mark consisting of the word "Charlotte Tilbury" in relation to cosmetics and beauty products. The application was opposed by Charlotte Tilbury TM Limited (the opponent), who argued that the mark was not distinctive and that the applicant was attempting to register a mark that was identical or deceptively similar to its own existing trade marks. The matter came before Timothy Brown, sitting as a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the applicant's proposed trade mark was capable of distinguishing the applicant's goods from the goods of other persons. This involved considering whether the mark was inherently adapted to distinguish the goods, and if not, whether it had acquired distinctiveness through use. The delegate also had to consider the opponent's argument that the proposed mark was identical or deceptively similar to existing registered trade marks owned by the opponent, and whether this similarity would lead to a likelihood of confusion among consumers.

In his reasoning, the delegate noted that the applicant's proposed mark consisted of a personal name, which, in the absence of evidence of acquired distinctiveness, is generally considered to have a low degree of inherent distinctiveness. The delegate examined the evidence of use filed by the applicant and concluded that the applicant had not discharged the onus of proving that the mark had acquired distinctiveness in relation to the specified goods. Furthermore, the delegate found that the proposed mark was indeed identical to the opponent's registered trade marks, and that the use of the mark by the applicant would be likely to deceive or cause confusion.

Consequently, the delegate dismissed the applicant's trade mark application.