Trade mark decision

BL Number
O/382/04
Decision date
31 December 2004
Hearing officer
Mr D Landau
Mark
GALAXY 101
Classes
09
Applicant
Chrysalis Group Plc
Opponent
Kabushiki Kaisha Namco
Opposition
Sections 5(2)(b), 5(3) & 5(4)(a)

Result

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

Section 5(3): - Opposition failed.

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

Points Of Interest

  • 1. None

Summary

The opponent in these proceedings (hereafter referred to as KKN) owns a registration of the mark GALAXIAN in respect of a range of goods in Classes 9 and 28. In particular KKN trades in video games machines and games for use therewith. It claimed use of its mark from 1979 onwards but such details as were provided indicated that use had been sporadic and modest in extent. The Hearing Officer concluded from the evidence filed that the use did not enhance the distinctive character of the GALAXIAN trade mark.

The applicant (hereafter referred to as Chrysalis) also filed evidence of use but as most of its use occurred after the relevant date, it did not assist the Hearing Officer.

Under Section 5(2)(b) the Hearing Officer compared the respective goods – in particular KKN's software with "tapes and disks and tapes and disks bearing recordings" of Chrysalis. After applying the relevant tests the Hearing Officer concluded that such goods were not similar. The Hearing Officer then went on to compare the respective marks Galaxy and device with GALAXIAN. As both marks shared the first five letters the Hearing Officer accepted that they had some similarity from a phonetic point of view but the respective marks were different visually and conceptually. GALAXIAN would be seen as an invented word whereas Galaxy would be recognised as an English word with a well known meaning. Thus the marks were not similar and, as the respective goods were also different, opposition under Section 5(2)(b) must fail.

In view of KKN's lack of reputation in its mark and the fact that the respective marks were not similar the Hearing Officer concluded that the grounds of opposition under Sections 5(3) and 5(4)(a) also failed.

Full decision O/382/04 PDF document117Kb