Trade mark decision

BL Number

O/106/98

Decision date

8 May 1998

Hearing Officer

Mr S J Probert

Mark

HERITAGE GREEN

Classes

06

Applicant

British Steel Plc

Opponent

Imperial Chemical Industries Plc

Opposition

Sections 3(3)(b); 5(2)(b) & 5(3)

Result

Section 3(3)(b): - Opposition dismissed.

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

Section 5(3): - Opposition failed.

Points Of Interest

• 1. In assessing reputation under Section 5(3) a ‘sliding scale’ is appropriate; the greater the reputation the greater the penumbra of protection extends into areas of dissimilar goods.

Summary

The opposition was based on the opponents’ registration of their mark ‘HERITAGE’ registered in Class 2 and used in relation to a range of paints. The Section 3 ground was dismissed as it had been founded in a ‘relative’ objection. Under Section 5(2) the Hearing Officer found the marks to be similar, but concluded that the goods were not similar and there was no likelihood of confusion. Under Section 5(3) he found that the opponents mark had not yet been used on its own, but always in conjunction with other marks (ICI and DULUX); it did not yet have a significant reputation.

Full decision O/106/98 40Kb