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Trade mark decision

BL Number
O/334/04
Decision date
8 November 2004
Hearing officer
Mr M Foley
Mark
C.J.H.S.
Classes
25
Applicant
Cecil Jones High School
Opponent
Banner Limited
Opposition
Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(a) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None

Summary

The opponents relied on seven trade mark registrations in Class 25 in respect of the same and similar goods as those of the applicants. Three of these marks are of the word PEGASUS (a winged horse in Greek mythology); two are of the word PERGASUS with a stylised device of a winged horse; one consists of a stylised device of a winged horse and one consists of the words FLYING HORSE. The evidence of use filed by the opponents was not well focused and while the Hearing Officer accepted that there had been use of the mark PEGASUS over a considerable period of time, he did not believe the mark had become more distinctive as a result of such use. No use of the other marks was established.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks. As the opponents had filed no evidence on the point, the Hearing Officer was not prepared to assume that a significant number of the general public would see the word PEGASUS as meaning "a winged horse" and have that image in their mind when they encountered the word mark PEGASUS. He thus did not think that the opponents’ PEGASUS marks were similar to the applicants' mark. Similarly he did not think the PEGASUS and stylised winged horse device marks or the FLYING HORSE mark were similar to the applicants' mark. In comparing the stylised winged horse device of the opponent with the mark of the applicant the Hearing Officer accepted that there were obvious similarities but he considered that the respective devices were different and the presence of the letters C.J.H.S in the applicants’ mark would also be a distinguishing factor. Opposition thus failed on the Section 5(2)(b) ground.

Under Section 5(4)(a) the Hearing Officer had only to take into account use of the PEGASUS mark. As he was unclear as to how the public would view this mark, he did not believe that there was likely to be any confusion of the public if the applicants used their mark, particularly taking into account the presence of the letters C.J.H.S. Opposition failed on this ground.

Full decision O/334/04 PDF document54Kb