House marks, sub-brands and indirect confusion: lessons from the Shein Belle and Shein Icon decisions

Two recent UK Intellectual Property Office (UKIPO) decisions highlight the ongoing risks faced by brand owners seeking to register composite trade marks that incorporate existing distinctive elements. In both cases, Roadget Business Pte. Ltd (Roadget) the operator behind the SHEIN fashion platform, was unsuccessful in defending their trade mark applications for the marks SHEIN BELLE and SHEIN ICON for clothing goods in Class 25.

Although the oppositions were brought by different businesses, relying  upon different earlier rights, the UKIPO reached the same conclusion that there was no likelihood of direct confusion, but consumers were likely to assume an economic connection between the parties, resulting in a finding of indirect confusion.

The SHEIN BELLE Decision

Belle Lingerie Limited (Belle Lingerie) opposed Roadget's application for the mark SHEIN BELLE on the basis of their three earlier trade marks.

Belle Lingerie relied upon three earlier trade marks:

• BELLE;
• A stylised BELLE mark; and
• BELLE LINGERIE.

The opponent argued that consumers would be confused by the shared element "BELLE" and that use of the mark would take unfair advantage of its reputation.

The hearing officer found that many of the goods covered by the SHEIN application were identical to those protected by the earlier registrations. Remaining items such as scarves, belts, gloves and headwear were considered similar due to shared trade channels, users and methods of sale.

The UKIPO accepted that the word SHEIN was an invented and highly distinctive term that dominated the contested mark. This created sufficient visual and aural differences to avoid direct confusion.

Despite rejecting direct confusion, the UKIPO concluded that consumers encountering SHEIN BELLE clothing would be likely to believe that the products represented a new range, collaboration or brand extension connected with the owner of the BELLE marks.

A key factor was that the words SHEIN and BELLE did not combine to create a unitary concept. As a result, BELLE retained an independent distinctive role within the composite mark.

The opposition therefore succeeded and the application was refused in its entirety.

The SHEIN ICON Decision

Dsquared2 Trademarks Limited opposed the application for SHEIN ICON, again covering clothing in Class 25 relying on its earlier trade mark registration for the word mark ICON.

The position on goods was straightforward and the UKIPO found the respective Class 25 goods to be identical.

The hearing officer considered ICON to be a recognised dictionary word that was somewhat allusive in the fashion sector, referring to famous individuals, styles or products that stand out from others.

Consequently, ICON was regarded as possessing only a low to medium degree of inherent distinctiveness.

As with SHEIN BELLE, the presence of the invented word SHEIN was enough to prevent consumers from mistaking one mark for the other. The hearing officer accepted that consumers would recognise a difference between SHEIN ICON and ICON, notwithstanding the fact that the entirety of the earlier mark appeared within the application.

The decisive question was whether consumers would assume a commercial connection between the two marks.

The UKIPO answered that question in the affirmative. Since SHEIN ICON did not create a new, unified meaning and incorporated the whole of the earlier mark, consumers could reasonably see it as a sub-brand, extension or variant of the ICON brand.

Accordingly, the opposition succeeded.

Key takeaways

These decisions reinforce several important principles of UK trade mark law.

First, the addition of a distinctive house mark such as SHEIN will not necessarily avoid conflict where the earlier mark remains recognisable and retains an independent distinctive role.

Secondly, the UKIPO continue to draw a clear distinction between direct and indirect confusion. While consumers may not mistake composite marks for earlier registrations, they may still assume that the goods originate from linked undertakings.

Taken together, the SHEIN BELLE and SHEIN ICON cases serve as a reminder for brand owners that:

• Adding a house brand is not always enough:
  A common assumption is that adding a well-known house mark will eliminate the risk of confusion. These decisions demonstrate clearly this is not necessarily the case. In particular in the fashion and retail sector where brand extensions, collaborations and sub-brands are commonplace.
  
• Indirect confusion remains a powerful ground of opposition
  Both opponents failed to establish direct confusion, yet both still succeeded. The shared elements BELLE and ICON convinced the hearing officer that consumers could believe the marks belonged to economically linked businesses.
  
• Earlier marks do not need to be extremely distinctive to succeed
  Neither BELLE nor ICON were considered highly distinctive on an inherent basis. In fact, the hearing officers regarded both marks as possessing only medium or low-to-medium inherent distinctiveness. Nonetheless, the oppositions succeeded showing that even relatively ordinary words can provide strong protection where they remain recognisable within a later composite mark and are used for identical goods.