Trade mark decision

BL Number
Decision date
12 June 2002
Hearing Officer
Mr G Salthouse
Ergonom Limited
Grahl GmbH
Sections 5(1), (2) & 5(4)(a)


Sections 5(1) & 2(b) - Opposition successful (Provisional decision)

Section 5(4)(a) - Opposition failed

Points Of Interest

  • 1. A trade mark is an earlier mark if it has an earlier filing date. However, any decision is provisional and can only be implemented when registration of the earlier mark is achieved.
  • 2 The Hearing Officer issued a supplementary decision dated 23 April 2004 (BL O/112/04). In that decision he states that the opponents subsequently withdrew their application for registration of the mark ERGONOM (the basis of this opposition). That being the case this opposition failed and costs were awarded to the applicants.


At the time of the hearing of this dispute the opponents opposition was based on their ownership of an earlier application in the UK for the mark ERGONOM in Class 20 in respect of the same and similar goods as those of the applicant. The opponents also claimed use of their mark from 1978 but this evidence was found to be unsatisfactory in many respects.

The applicants also claimed use of their mark from 1969 onwards and indicated that they had owned a registration for the mark ERGONOM in class 20 under No 1280312. This mark had not been renewed in 1993 due to an oversight when changes were occurring at the proprietor company. With regard to the applicants evidence of use claimed the Hearing Officer also found it to be unsatisfactory in many respects.

Under Section 5(4)(a) - Passing Off - the Hearing Officer considered the evidence provided by both companies in some detail. He concluded that neither party had demonstrated that they enjoyed a goodwill in the mark ERGONOM at the relevant date. Thus while there might be confusion in the marketplace, there was no misrepresentation. Opposition failed on this ground.

Under Section 5(1) it was accepted that identical marks and identical goods were at issue. The opponents were therefore successful on this ground. They were also found to be successful under Section 5(2)(b) where identical marks and similar goods were at issue.

The Hearing Officer noted that his decision under Section 5 was provisional in that no final decision could be given until, and if, the opponents applied for mark achieved registration. It is currently being opposed by these applicants.

The applicants also claimed the benefit of “honest concurrent use” but the Hearing Officer concluded that such use as was shown, did not assist them in relation to the Section 5 grounds.

Full decision O/236/02 PDF document41Kb