In a pair of decisions handed down this summer, the UK Intellectual Property Office upheld oppositions against two trade mark applications filed by online fashion giant Shein for its house brand + another term. The first opposed mark was 
and the second was 
, both of which covered class 25 for clothing and related goods. In each case, the oppositions failed on the basis of a likelihood of direct confusion but succeeded on the basis of indirect confusion, under section 5(2)(b) of the Trade Marks Act 1994.
Background
Both applications were filed by Roadget Business Pte. Ltd, the corporate entity behind Shein. The SHEIN ICON application was opposed by Dsquared2 Trademarks Limited, the owner of an earlier registration for the word mark ICON covering goods including clothing in class 25. The SHEIN BELLE application was opposed by Belle Lingerie Limited, relying on three earlier marks incorporating the word BELLE; a word mark, a stylised version in cursive script, and the composite mark BELLE LINGERIE, which all covered clothing in classes 25 amongst other things.
Comparison of marks and goods
In both cases, the goods were found to be identical or highly similar. The critical question was therefore the degree of similarity between the respective marks.
In the SHEIN ICON case, the Hearing Officer found that, although the word SHEIN contributed significantly to the distinctive character of the opposed mark as an invented word, there was a medium degree of visual and aural similarity, as the word ICON appeared in its entirety in the opposed mark. Conceptual similarity was found to be low, as ICON is a known dictionary word which was considered to be allusive in the context of fashion goods, and some consumers may understand the SHEIN ICON mark to mean an ICON that can be attributed to SHEIN.
In the SHEIN BELLE case, the degree of similarity was found to be lower. Visual and aural similarity with the earlier word mark (BELLE) was assessed to be low to medium, with conceptual similarity assessed to be medium. Similarity with the stylised BELLE mark and BELLE LINGERIE was found to be lower still, with the Hearing Officer finding only a low degree of visual similarity in each case.
Distinctive character
Here, the two decisions diverge more significantly. ICON was found to have an inherent distinctive character of a low to medium degree”, largely because the word was considered allusive in the fashion context, an icon being “someone or something which [has] qualities that stands out from others”. BELLE, by contrast, was found to be inherently distinctive to a medium degree; whilst the word means “beautiful” and might therefore be mildly allusive for clothing, the Hearing Officer considered that this required “some thought on the part of the consumer” and did not materially affect distinctiveness.
When it came to enhanced distinctiveness acquired through use, the outcomes were different but neither was helpful to the respective opponents. In the SHEIN ICON case, the Hearing Officer found Dsquared2’s evidence did not demonstrate acquired distinctive character due to deficiencies in the evidence. In particular, the Hearing Officer was unable to discern whether the evidence all related to use of the ICON mark rather than the house Dsquared2 mark, and some examples of use appeared to show the ICON mark being use descriptively on garments to refer to the wearer as an ‘Icon’ rather than as a badge of origin. In the SHEIN BELLE case, the evidence of enhanced distinctiveness was stronger, but was found to relate to “online retail services relating to lingerie”, rather than to any class 25 goods. Online retail services were not covered by Belle Lingerie’s earlier registration for the word mark BELLE (which was their best case on similarity of marks) and so this finding did not improve their chances of success.
Likelihood of confusion
Both decisions reached the same conclusion: no direct confusion, but a likelihood of indirect confusion. In each case, the presence of the highly distinctive invented word SHEIN in the opposed marks was sufficient to prevent consumers from mistaking one mark for the other.
However, both Hearing Officers found that the second element (ICON or BELLE) retained an independent distinctive role within the composite mark and did not form a new “meaningful unit” or have any “unitary meaning” with SHEIN (i.e. the combination was no more than the sum of its parts). This led to the conclusion that consumers were likely to perceive the opposed marks as brand extensions or sub-brands connected to or associated with the owners of the earlier marks.
Conclusions
These two decisions serve as a useful reminder to brand owners that the practice of adding a house brand to a mark which would otherwise be at risk high of opposition is not a panacea and will not necessarily avoid a finding of indirect confusion. They also serve as a reminder to brand owners to get their evidence right, and to focus oppositions on the best case available to them – in the SHEIN BELLE case relying on the stylised BELLE mark and the composite BELLE LINGERIE mark did not improve the chances of success. Of course, the opposition decisions do not determine the question of infringement, where context is key.