A name is not reason for confusion

In a decision of the UKIPO (O/219/18, HARRY GORDON’S BAR and HARRY GORDONS (Opposition), 5th April 2018), the IPO found in favour of retailer Selfridges, allowing the registration of its trade mark applications for HARRY GORDON’S BAR and HARRY GORDONS.

In May 2013, Selfridges applied for the above trade marks covering classes 29, 30, 32, 33 and 43 for goods including alcohol and services for providing drinks.

In August 2013, Harry’s New York Bar filed a notice of opposition against all of the goods and services in both applications. The Opponent argued that the use of the name HARRY in Selfridges’ trade marks resulted in similarities with its earlier marks HARRY’S, HARRY’S BAR and HARRY’S NEW YORK BAR, which it claims were first used in Paris in 1911.

The Opponent submitted that its bars can be found in luxury hotels that would be visited by the same sort of people who frequent Selfridges’ store on London’s Oxford Street. Therefore, use of the mark in such a prestigious establishment would “ride on the coat tails” of its existing reputation.

Selfridges rejected these claims, stating that its bar was named after the retailer’s founder, Harry Gordon Selfridge, and inspired by the popular TV series, Mr Selfridge, about his life. (more…)