Trade mark decision

BL Number
O/308/04
Decision date
8 October 2004
Hearing officer
Mr M Reynolds
Mark
DriBoard
Classes
25, 29
Applicant
William Plenderleith
Opponent
Decathlon
Opposition
Sections 5(2)(b) & 5(4)(a)

Result

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

Section 5(4)(a): - Ground not considered.

Points Of Interest

  • 1. Ground not considered.

Summary

The opponent is the owner of an International Trade Mark TRIBORD which has been protected in the UK since 1997 in a range of Classes including Classes 25 and 28. It also claimed use of its mark in the UK from 1997 onwards in respect of clothing and sporting and leisure goods. While the use has been reasonable, little information of a detailed nature was provided to the Hearing Officer as regards the precise nature of the goods sold or their promotion. Consequently, the Hearing Officer was unable to conclude that the mark TRIBORD had an enhanced reputation though he accepted that it was a distinctive mark.

Under Section 5(2)(b) the Hearing Officer quickly established that identical goods were at issue and went on to compare the respective marks TRIBORD and DriBoard. The Hearing Officer decided that the high point of the opponent’s case was the fact that the two marks were close phonetically. However, they were not close visually or conceptually as consumers were likely to note the semi-descriptive nature of the applicant’s mark and see the opponent’s mark as invented. In this context it was unlikely that consumers would see the mark TRIBORD as a French word meaning "starboard". Taking all the relevant factors into consideration the Hearing Officer concluded that there was unlikely to be confusion of the public and therefore the opposition under Section 5(2)(b) failed.

As the opponent was in no better position under Section 5(4)(a) as compared to Section 5(2)(b) the Hearing Officer decided that there was no need to consider that ground.

Full decision O/308/04 PDF document40Kb