Diamonds are forever – Beck Greener wins Tiffany case

Duncan J Morgan | September 2016

Beck Greener has scored a significant success for Tiffany & Co. in relation to its well-known LUCIDA mark.   The EUIPO’s Cancellation Division upheld Tiffany & Co’s claim that an EU registration for LUCIDE should be declared invalid for the majority of the wide ranging list of products and services it covered, on the basis of Tiffany’s long-standing EU registration for LUCIDA.  The decision can be viewed at the following link: https://euipo.europa.eu/copla/trademark/data/00917216/download/CLW/CCL/2016/EN/Invalidity%2012201%20C-EN-Lucida.doc?app=esearch

Tiffany’s EU registration for LUCIDA goes back to 1998 and covers jewellery.  The registration for LUCIDE was obtained in 2014 in respect of a range of apparel and luxury goods, including jewellery, clothing, household goods, perfumes and beauty products, as well as corresponding retail services.  

Tiffany challenged the registration on the basis of its own LUCIDA registration, claiming first that the use of LUCIDE was likely to confuse the public into believing that Tiffany was behind the products and services in question.  In addition, Tiffany challenged the registration on the grounds that even if there were no likelihood of confusion, in view of Tiffany’s strong reputation in its mark, use of LUCIDE would bring to mind Tiffany’s LUCIDA and would thereby confer an unfair advantage on the users of LUCIDE even for products and services dissimilar to jewellery.

Working with US counsel, Beck Greener submitted to the Cancellation Division a large and comprehensive volume of evidence demonstrating Tiffany & Co.’s longstanding use of LUCIDA for jewellery throughout the Europe Union, including through sales of and in advertising and promotional materials for the range.  The evidence also demonstrated the frequent and regular mentions that Tiffany & Co’s LUCIDA range has received over the course of many years, in editorial and other commentary in the European press and media.

In an unusually long, sixty page decision, the Cancellation Division carefully assessed Tiffany’s evidence and accompanying submissions.  It upheld Tiffany’s claim that it enjoys a substantial and European-wide reputation in LUCIDA and that even for goods and services dissimilar to the jewellery covered in Tiffany’s registration, use of LUCIDE would provide its owners with an unfair advantage. 

In the decision, the registration for LUCIDE was declared invalid not only for jewellery but for cosmetics and beauty products, clothing, furniture, textiles, a wide range of household goods and corresponding retailing services.  If no appeal is filed, the decision will be implemented.

The case was a significant victory for Tiffany & Co.  It provides a useful reminder that with the right evidence, trade marks with a strong reputation can be enforced against the use and registration of identical or similar trade marks for products and services wholly dissimilar to those in the claimant’s registration.