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Trade mark decision

BL Number
O/038/04
Decision date
5 February 2004
Hearing officer
Mr D Landau
Mark
CHEERS
Classes
09, 38
Applicant for Invalidity
Miles Samaratne
Registered Proprietor
Paramount Pictures Corporation
Invalidity
Section 47(2) based on Sections 5(1), 5(2)(a), 5(2)(b) & 5(4)(a)

Result

Section 5(1) & 5(2)(a) - Invalidity action failed.

Section 5(2)(b) - Invalidity action partially successful. Implementation conditional on registration of applicants marks.

Points Of Interest

  • 1. None

Summary

The applicant had applied to register the marks CHEERS AFRICA, CHEERS ASIA, CHEERS MIDDLE EAST, CHEERS INTERNATIONAL and CHEERS EUROPE in Classes 9 and 38 prior to the date of application of the registered mark. They also claimed use of some of these marks prior to date of application of the registered mark and the Hearing Officer accepted that they had established a protectable goodwill at the relevant date.

The registered proprietors filed some evidence of use of the mark CHEERS but there was no relevant use in relation to the goods and services of the registration in suit.

The application for invalidity under Sections 5(1) and 5(2)(a) was dismissed because the Hearing Officer concluded that the respective marks were not identical.

Under Section 5(2)(b) the Hearing Officer was satisfied that the respective marks were very similar and that the opponents goods and services were similar to some of the registered proprietors Class 9 goods and all of their Class 36 devices. In the event that the applicant's marks were registered the registered proprietors mark would be restricted accordingly.

Under Section 5(4)(a) – Passing Off – the Hearing Officer was satisfied that the applicant had established a protectable goodwill at the relevant date in respect of goods and services similar to those within the registration in suit. Thus the Class 38 registration would be deleted and the Class 9 registration restricted in the same manner as under Section 5(2)(b). However, this finding was not conditional on the applicant achieving registration and would take effect at the end of the appeal period.

Full decision O/038/04 PDF document75Kb