Trade mark decision

BL Number
Decision date
16 August 2004
Hearing Officer
Mr G Salthouse
12, 35
Julian James
Smart GmbH
Sections 5(2)(b) & 5(4)(a)


Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • 1. Comparison of the marks SMART v CARSMART; adjudged to be not similar. (The differences outweigh the similarities).
  • 2. Comparison of the goods/services; motor vehicles in Class 12 not similar to the services in Class 35 – essentially an internet site specializing in the sale of motor vehicles.
  • 3. Family of marks.


The opposition was based on a number of registrations of marks consisting of or incorporating the word SMART.

The Hearing Officer found the Class 12 goods (motor vehicles) to be identical; he did not consider the Class 35 services (an internet web site specializing in the sale of motor vehicles) to be similar to the opponent’s Class 12 goods. He went on to compare the marks SMART v CARSMART. Overall, said the Hearing Officer, the differences in these marks outweighed the similarities. On a global appreciation there was no likelihood of confusion. The Sections 5(2)(b) objection failed accordingly.

The Hearing Officer went on to consider the matter under Sections 5(4)(a), but his finding under Section 5(2)(b) respecting the likelihood of confusion had effectively decided the matter since the necessary misrepresentation would not occur.

Full decision O/251/04 PDF document148Kb