TWIGGY & CO. LIMITED V TWIGGY TAGS LTD

Background

Twiggy Tags Ltd (“our client”) manufactures and sells outdoor dog gear. We filed the following UK trade mark application for our client, which is now registered:

• UK trade mark registration no. 3684395 TWIGGY TAGS in Classes 6, 18, 20, 21, 25, 28 & 35.

Opposition

Relying on their earlier UK trade mark registrations for “TWIGGY” and alleged goodwill in this sign, Twiggy & Co. Limited (“Twiggy & Co.”), owned by Dame Lesley Lawson DBE, an English model, actress, and singer, widely known by the nickname “Twiggy”, opposed the aforementioned application.

Settlement discussions

Keen to take an amicable approach from the outset, our client instructed us to agree to cooling off periods with Twiggy & Co to allow for the settlement negotiations to take place without the encumbrance of formal evidence deadlines.

Despite there being ample scope for co-existence on the register and in the marketplace, Twiggy & Co proposed a settlement agreement that was unnecessarily restrictive and burdensome in respect of our client’s scope of protection and commercial activities. Our client nonetheless wished to remain respectful and proposed a B2B meeting with Twiggy & Co in an attempt to facilitate a friendly discussion regarding the agreement without any filters being applied by lawyers.

Maintaining their aggressive approach, Twiggy & Co dismissed our client’s offer to discuss the settlement in a more amicable setting and were unwilling to agree to our client’s settlement proposal that took the parties’ commercial interests into account.

Twiggy & Co also made an aggressive call, threatening to terminate the cooling off periods, and further belittled our client by suggesting that its business aspirations were limited.

Revocation actions

With attempts to resolve the matter amicably proving fruitless, our client instructed us to terminate the cooling off periods for the oppositions and file revocation actions against Twiggy & Co’s registered trade marks for TWIGGY in the UK. We had notified Twiggy & Co at the beginning of negotiations that, as a result of their marks being over five years old and there being no evidence of any genuine use of the same, their registrations were vulnerable to revocation.  

As a result of Twiggy & Co’s unreasonable approach and pressure tactics, our client felt the only remaining option was to file formal proceedings and challenge their trade mark rights. Unable to provide evidence of any genuine use of TWIGGY at the UK trade mark registry, Twiggy & Co were forced to surrender their marks.

The current situation

Notwithstanding the other party’s requests to surrender their TWIGGY registrations, our client decided to continue with the revocation actions. The UK IPO published decisions for the revocation actions which were unsurprisingly decided in our client’s favour. No appeals were filed.

We shall shortly be requesting the maximum cost awards to be issued in our client’s favour from the UK IPO. If our client’s costs are not paid promptly, we will request that the UKIPO places Twiggy & Co on the list of unpaid costs orders.