A fight with the big boys! How Vault IP successfully defended an opposition for a premium boxing clothing brand.
BOXRAW exists to pioneer the boxing lifestyle, enabling the spirit of boxing to live inside and outside the ring. BOXRAW makes the finest boxing clothing and accessories for passionate boxers around the world. Collaborating with the greatest champions and athletes, they accompany any boxing journey, whether it’s to strengthen your fitness, grow your confidence, or become a world champion. Today BOXRAW ships its boxing clothing, sportswear, fitness and lifestyle apparel to over 55 countries around the world every month.
BOXRAW originally filed a trade mark application for the mark ‘BOXRAW’ themselves, back in January 2016. The application was filed in the UK and covered six classes of goods/services, including dietary supplements, clothing, bags, sports equipment, retail services as well as sporting and cultural activities. However, a Notice of Threatened Opposition was filed against the application by G-Star Raw, the urban/streetwear clothing company, which specialises in raw denim. It was at this stage that BOXRAW sought the advice of a trade mark attorney to help them understand what their options were and whether it was worth defending the opposition.
Why Vault IP?
BOXRAW spoke to a several attorneys who advised against defending the opposition. Reluctant to accept their advice, BOXRAW sought the opinion of Michelle Bishton at Vault IP. Whilst Michelle felt that the case could go either way, she could see arguments in BOXRAW’s favour, such as the fact that there are numerous clothing companies which use and have registered the mark ‘RAW’, both alone and in combination, and that ‘RAW’ alone is not particularly distinctive, as it is descriptive of ‘raw’ denim. Michelle also highlighted that there were a number of other descriptive uses of the word ‘RAW’ in relation to clothing, bags and leather goods. For all of these reasons, Michelle believed that the Opponent’s rights in the mark ‘RAW’ were likely to be limited and that there were arguments in BOXRAW’s favour.
Encouraged that there was an angle for them to pursue, BOXRAW appointed Vault to defend the opposition on their behalf.
The first step was to try to settle the matter amicably and Vault contacted G-Star Raw’s attorneys, offering to restrict the goods/services in the application to the sport of boxing. This offer was rejected outright and G-Star Raw proceeded to file an opposition.
The next step was for Vault to file a Counterstatement, rejecting the grounds of opposition. G-Star Raw then filed its Observations and evidence in support of the Opposition. This comprised 377 pages, which Vault reviewed and prepared counter arguments and evidence in response. Vault put forward arguments such as the fact that the element ‘RAW’ within the Applicant’s mark was always combined with ‘BOX’ and that it did not stand out as an independent element. Vault also argued that the Opponent had adopted the ‘RAW’ element as a reference to ‘raw’ denim and as such the mark alone was not particularly distinctive. It was the ‘G-Star’ element which consumers identified with the Opponent and not ‘RAW’ alone. Furthermore, Vault collated a large amount of evidence showing that ‘RAW’ is a common element of many registered and unregistered marks in the clothing industry etc., the majority of which had been used/registered prior to G-Star Raw’s registrations. This evidence was intended to demonstrate that the Opponent’s rights in the mark ‘RAW’ were not wide enough to prevent use of the mark in combination with other elements.
The UKIPO agreed with the arguments filed on behalf of BOXRAW and dismissed the opposition. No appeal was filed, and BOXRAW secured registration for all the goods/services claimed in the initial application. An award of costs was also made in BOXRAW’s favour.
Since securing registration of the trade mark BOXRAW, Vault has successfully defended another opposition that BOXRAW encountered, this time for the trade mark ‘AND STILL’.
Quote from Ben
“We are delighted with what Vault IP managed to achieve and that we were able to secure protection for our mark for all of the goods/services of interest to us. Back when we were a start-up, no one, besides Michelle, took the time to really help or explain the process. She was honest and open throughout the process, not providing false hope, but equally demonstrating balanced and well thought through arguments. We wouldn’t hesitate to recommend Vault IP.” Ben Amanna, Owner / Founder, BOXRAW