Trade mark decision

BL Number: O/061/05
Decision date: 10 March 2005
Hearing Officer: Mr J MacGillivray
Mark: EVOLUTION OIL
Classes: 04
Applicant: Nicos Iordanou
Opponent: Elf Aquitaine
Opposition: Sections 5(2)(b) & 5(4)(a)

Result

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

Section 5(4)(a): - No formal finding.

Points Of Interest

1. Comparison of the marks : ELF DIESEL EVOLUTION v EVOLUTION OIL & OPTANE EVOLUTION v EVOLUTION OIL

Summary

The opposition was based on registration of the marks ELF DIESEL EVOLUTION and OPTANE EVOLUTION in Classes 1 and 4.

Taking first the objection under Section 5(2)(b) the Hearing Officer noted that the respective goods were identical. Turning to a comparison of the marks the Hearing Officer declined to consider the 'state of the register' evidence, which both parties had introduced since the marks had to be considered on their own merits. The common distinctive element in the marks was the word EVOLUTION; OIL and DIESEL were descriptive; the addition of house marks such as ELF or OPTANE "(did) not significantly defuse the risk of confusion". The Hearing Officer found a likelihood of confusion. The opposition under Section 5(2)(b) succeeded accordingly and he did not go on to consider the matter under Section 5(4)(a).

Full decision O/061/05 28Kb