Trade mark decision

BL Number
Decision date
27 August 2002
Hearing Officer
Mr J MacGillivray
16, 38
News Group Newspapers Limited
Sun Microsystems Inc
Sections 3(6); 5(2)(b); 5(3) & 5(4)(a)


Section 3(6) - Opposition failed.

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

Section 5(3) - Opposition failed.

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

Points Of Interest

  • 1. Comparison of the services : provision of Internet or communication services not similar to computer hardware, software or business management.


This was one of three related actions involving the same parties and heard on the same day (see also BL O/354/02 and BL O/355/02). The opposition was based on a number of ‘SUN’ marks in the ownership of the opponents.

Dealing with the matter first under Section 5(2)(b), the Hearing Officer noted that the opponents’ marks ‘had inherent strengths’ but the evidence did not support any claim to enhanced distinctiveness by reason of use and reputation.

After comparing the respective goods/services, the Hearing Officer (having found no similarity in respect of the Class 16 specification) stated that it did not seem to him that it was "normal in trade for those businesses engaged in the provisions of Internet or communication services to be also in the computer hardware or software trade or in business management". Consequently, he went on to conclude that the services in Class 38 were not similar to those specified in the opponents’ registrations and therefore "notwithstanding similarities between the marks themselves" there was no likelihood of confusion. The Section 5(2)(b) objection failed accordingly.

Under Section 5(3), the Hearing Officer was unable to infer from the evidence that the opponents had a reputation in the UK at the relevant date, especially in the light of the strictness of the requirements of that Section. The opposition on that ground failed accordingly.

Under Section 5(4)(a), the Hearing Officer considered that the evidence of reputations or goodwill was insufficient to sustain a passing off action.

Likewise, under Section 3(6), the evidence was insufficient to support the allegation.

Full decision O/353/02 PDF document51Kb