Trade mark decision

BL Number
O/337/02
Decision date
14 August 2002
Hearing officer
Mr M Knight
Mark
SOULEDGE
Classes
09, 28
Applicant
Kabushiki Kaisha Namco (Namco Ltd)
Opponent
The Edge Interactive Media Inc; & The Edge Interactive Media Ltd
Opposition
Sections 3(1)(b); 3(1)(c); 3(1)(d); 3(6); 5(2)(b) & 5(4)(a)

Result

Section 3(1)(b) - Opposition failed.

Section 3(1)(c) - Opposition failed.

Section 3(1)(d) - Opposition failed.

Section 3(6) - Opposition failed.

Section 5(2)(b) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

Comparison of the marks EDGE v SOULEDGE.

Summary

The Hearing Officer dismissed all the grounds under Section 3 as the evidence submitted was insufficient to support any such objections; factors relating to the market in the USA were 'not determinative', circumstances in the two markets (UK & USA) could be different.

Under Section 5(2)(b) the Hearing Officer had to consider the clash between the opponents’ EDGE marks, and the applicants’ marks SOULEDGE. The applicants goods in Classes 9 and 28 were the same as or similar to the opponents’ goods in Class 9, he decided. The marks were not similar, he thought, but he went on to consider the distinctive character of the opponents’ mark and its reputation. Having done so he decided that there was no likelihood of confusion. The Section 5(2)(b) ground failed accordingly.

This finding effectively decided the matter under Section 5(4)(a) since the dissimilarity of the marks made misrepresentation unlikely; the evidence of reputation was also insufficient, noted the Hearing Officer.

Headings for Digest entry

(i) Section 3(1)(b)

(ii) Section 3(1)(c)

(iii) Section 3(1)(d)

(iv) Section 3(6)

(v) Section 5(2)(b)

(vi) Section 5(4)(a)

(vii) Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 (aka GROMAX case)

(viii) Sabel BV v Puma AG [1998] RPC 199

(ix) Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] RPC 117

(x) Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ETMR 690

(xi) Marca Mode CV v Adidas AG & Adidas Benelux BV [2000] ETMR 723

(xii) British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (aka TREAT case)

(xiii) RALEIGH INTERNATIONAL Trade Mark [2001] RPC 11

(xiv) WILD CHILD Trade Mark [1998] RPC 455

Full decision O/337/02 PDF document29Kb