Trade mark decision

BL Number

O/012/04

Decision date

15 January 2004

Hearing Officer

Mr D Landau

Mark

PINEWOOD STUDIOS

Classes

20

Applicant

Sovereign Homemaker

Opponent

Pinewood Studios Holdings Limited

Opposition

Sections 3(1)(a), (b) & (c) & 5(3)

Result

Section 3(1)(a), (b) & (c) - Opposition failed.

Section 5(3) - Opposition failed.

Points Of Interest

• None

Summary

The applicants’ application in Class 20 related to goods all made from pine.

The opponents claimed that the mark applied for was not distinctive for the goods at issue and that registration would be detrimental to their own mark in which they claimed a reputation. The opponents also claimed ownership of registrations of the mark PINEWOOD STUDIOS in Classes 25, 41 and 42 and of the mark PINEWOOD in Classes 9, 37 and 41. Their evidence indicated use of PINEWOOD STUDIOS in relation to film studies but no evidence of use of PINEWOOD solus was filed.

The applicants admitted at the outset that the opponents had a reputation in the mark PINEWOOD STUDIOS in relation to film studios but disputed that that reputation would extend to items of furniture. Under Section 5(3) the Hearing Officer considered the opponents’ reputation in their mark and the proposed use by the opponents and concluded that the respective activities were so far apart that there was no likelihood of any association such as could lead to any detriment to the opponents’ mark. Opposition failed on this ground.

Under Section 3(1)(b) the Hearing Officer decided that PINEWOOD was a somewhat usual term for furniture made from pine and that STUDIOS was not a synonym for shop. Thus the mark as a whole was not devoid of distinctive character. Opposition failed on this ground and also on the Section 3(1)(a) and (c) grounds.

Full decision O/012/04 57Kb