Trade mark decision

BL Number
O/013/08
Decision date
18 January 2008
Hearing Officer
Mrs J Pike
Mark
PLAYBOYSKOOL
Classes
08, 09, 16, 18, 25, 32, 33, 34, 35, 38, 39, 41, 45
Applicants
Hot Sheyt Management & Music Publishing Est.
Opponents
Playboy Enterprises International Inc
Opposition
Sections 5(2)(b); 5(3); 5(4)(a) & 56

Result

Section 5(2)(b): Opposition successful, for the most part. Section 5(3): Opposition failed. Section 5(4)(a): Opposition successful, for the most part.

Points Of Interest

  • 1. Comparison of the marks PLAYBOY v PLAYBOYSKOOL.
  • 2. Costs in proceedings before the Registrar.

Summary

The opposition was based on the opponents’ mark PLAYBOY. Under Section 5(2)(b) the Hearing Officer found the opponents successful in respect of all foods and services, save for a few in Class 45. The Hearing officer went on to find that the opponents’ evidence did not establish a reputation in the European Community at the relevant date and the Section 5(3) objection failed accordingly. However, under Section 5(4)(a) the Hearing Officer found for the opponents in respect of all but one of the surviving services in Class 45, viz “security services for the protection of individuals”.

The opponents’ position could not be improved by recourse to Section 56.

An award of costs was made in favour of the opponents, but it was reduced so as to reflect the fact that much of their evidence had been ill-directed.

Full decision O/013/08 PDF document106Kb