Trade mark decision

BL Number
Decision date
3 January 2003
Hearing Officer
Mr M Reynolds
J C Bamford Excavators Limited
JCB Co Ltd
Sections 5(2)(b) & 5(4)(a)


Section 5(2)(b) - Opposition partially successful

Section 5(4)(a) - Not decided

Points Of Interest

  • 1. Honest Concurrent Use : One of the few cases where honest concurrent use has assisted an applicant.
  • 2. The applicants appealed to the Appointed Person essentially on the basis that following the issue of the Hearing Officer’s decision they had filed a request for partial revocation of the opponents’ mark. Subsequently, they requested a stay of the appeal to await the outcome of the revocation proceedings. The Appointed Person refused the stay and dismissed the appeal. See BL O/198/03 dated 25 June 2003.


The opponents opposition was based on their ownership of a registration for the mark JCB and device in Class 36 in respect of the same and similar services as those of the applicants. The opponents also filed evidence of use from 1982 onwards and by 1995 turnover in their credit card business was over £25m per annum. In the context of the financial services industry, which is enormous, the Hearing Officer did not accept that the opponents mark had an enhanced level of distinctiveness.

The applicants application had proceeded to advertisement on the basis of "honest concurrent use" and the evidence filed for the examiners consideration was refiled in these proceedings. The Hearing Officer examined this evidence carefully and concluded that use from 1970 was essentially in relation to the supply of financial services relating to the purchase, leasing etc of construction machinery and construction vehicles. The applicants core activity was the manufacture and sale of such goods. The Hearing Officer did not find that the applicants had used their mark in relation to general financial services as claimed.

Under Section 5(2)(b) the Hearing Officer noted that identical services were at issue and had little difficulty in deciding that as the dominant element of each of the respective marks was the letters JCB; that the marks were very similar and that there was a likelihood of confusion.

With regard to the concurrent use claim by the applicants the Hearing Officer accepted that there had been significant use over a long period of time but only in relation to their core activity of construction machinery and construction vehicles. He therefore indicated that the applicants specification must be restricted to represent the use which had taken place. In making his proposals the Hearing Officer noted that the opponents recognised the applicants use and had made co-existence proposals during the course of the proceedings.

In view of his decision under Section 5(2)(b) the Hearing Officer mentioned the ground under Section 5(4)(a) only briefly. He noted that the opponents had conceded at the hearing that they had no better case under Section 5(4)(a). The Hearing Officer observed that this ground was arguably weaker in view of their actual specialised use. As the ground was not pursued at the hearing it was not necessary to decide it.

Full decision O/004/03 PDF document80Kb