TikTok, BALR and Pierre Cardin

21 January 2021

What is the similarity between TikTok, BALR and Pierre Cardin? All three are well-known brands that were recently copied. Three European applications were filed by other companies: the TikTok logo was filed by a Chinese man for clothing, an application of BALR was filed by J&B Limited for cigarettes and Pierre Cardin (in handwriting) was filed by a Swiss company for lighting equipment.

This shouldn't be possible, right? Yet it is hard work for well-known brands to stop these types of applications. The above-mentioned oppositions also achieved mixed results.

In short: TikTok was able to keep the logo out the register to a large extent. BALR lost but Pierre Cardin won the opposition.

What makes the difference? TikTok based its opposition only on the ground of risk of confusion and not on the wider protection based on the reputation of its trademark. Confusion only applies when there are similar products or services. And there was certainly similarity, but not for all products and services.

In addition to a risk of confusion, BALR had also invoked the reputation of its brand. Confusion was a long shot of course: clothing and cigarettes are of course no similar products. But if you claim that your brand is well known, you have to prove it and BALR has forgotten that. The opposition is firmly rejected.

Finally, the company Pierre Cardin has plenty prior rights, including a word mark for lighting equipment. One of the invoked trademarks was not subject to the use requirements. An almost identical brand for identical products? This provides a fairly easy win.

You could therefore argue that it is best to file your trademark for many products and services and to repeat this regularly so that you can avoid the use requirements. But that is no longer the case. Constantly refiling trademarks could be seen as bad faith. The question is therefore whether Pierre Cardin has a valid reason for his new registration for lighting equipment, now that he has registered this trademark several times before.

The conclusion is that fame makes life easier, but also more difficult. You have to prove your reputation, even though you are famous!

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