Trade mark decision

BL Number
O/016/01
Decision date
10 January 2001
Hearing Officer
Dr W J Trott
Mark
CANDIE'S
Classes
25
Applicant
Candie’s Incorporated
Opponent
C&A
Opposition

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • 1. The applicants predecessors had previously applied to register their CANDIE’S mark in the UK and had been opposed by the present opponents (Opposition No 16831). These proceedings which were under the Trade Marks Act 1938 were decided by MrJohn Myall, the then Assistant Registrar. In those proceedings Mr Myall found the marks confusingly similar and refused the application.
  • 2. The opponents claimed that because the opponents goods under their CANDA mark would be sold only through their own C&A stores there was less risk of confusion. The Hearing Officer refused to accept such a submission and said that under Section 5(2) he must consider normal and fair use of the marks at issue. Specific types of use might be relevant in the matter of passing off under Section 5(4)(a) but not under Section 5(2).

Summary

The opponents opposition was based on their ownership and use of their registered CANDA mark. Under Section 5(2)(a) it was accepted that identical goods were at issue and that the opponents had an extensive reputation in their mark. The Hearing Officer therefore compared the respective marks CANDIE’S and CANDA and came to the conclusion that they were not confusingly similar because they were visually distinct and conceptually very different. He also found them different from an oral view point and did not believe that imperfect recollection would be a problem, even bearing in mind the opponents reputation in their mark. The Hearing Officer took particular note of guidance from an earlier case - React Music Limited - where it was stated that consumers select clothes by eye rather than by placing orders by word of mouth.

In view of his decision under Section 5(2)(b) the Hearing Officer dealt only briefly with the grounds under Section 5(4)(a) - Passing Off - and reached the same decision.

Full decision O/016/01 PDF document35Kb