Trade mark decision

BL Number
O/138/04
Decision date
18 May 2004
Hearing officer
Mr J MacGillivray
Mark
BRAND STORM
Classes
38, 41, 42
Applicant
Storm Radio Limited
Opponent
GWR Group Plc
Opposition
Sections 5(1), 5(2)(a), 5(2)(b) & 5(4)(a)

Result

Sections 5(1) & 5(2)(a) - Opposition failed.

Section 5(2)(b) - Opposition successful in respect of Classes 38 & 41. Failed in respect of Class 42.

Points Of Interest

  • 1. None

Summary

The opponent only commenced to use its marks STORM and THE STORM in relation to radio station broadcasting services some thirteen days prior to the relevant date of 13 February 2001, but there had been considerably pre-publicity in relation to the bidding for radio station licenses involving presentations, publicity and the actual bidding process. The marks were also registered in respect of a range of goods and services in Classes 16, 38 and 41.

Under Sections 5(1) and 5(2)(a) the Hearing Officer was satisfied that the respective marks were not identical and dismissed these grounds.

Under Section 5(2)(b) the Hearing Officer noted that identical and similar services were at issue in the applicant's Classes 38 and 41 as compared to the opponent’s specifications. In comparing the respective marks the Hearing Officer doubted that the opponent had an enhanced reputation in its marks at the relevant date but he also noted that the word STORM was the distinctive and dominant element in the respective marks. In short he considered them to be confusingly similar and went on to find that the opponent was successful in its opposition against the applicant's Classes 38 and 41.

In view of his decision under Section 5(2)(b) the Hearing Officer saw no need to consider the Section 5(4)(a) ground.

Full decision O/138/04 PDF document38Kb