Trade mark decision

BL Number

O/021/02

Decision date

18 January 2002

Hearing Officer

Mr D Landau

Mark

SUNDIP

Classes

03, 29, 30, 32

Applicants

Naurus (Pvt.) Limited

Opponent

Product Suppliers AG

Opposition

Sections5(2)(b); 5(3) & 5(4)(a)

Result

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

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• Events taking place after the relevant date may be considered by the Hearing Officer.

Summary

The opposition was based on the opponents’ mark SUNTIPT which was registered in respect of various goods in both the UK and the Community. At the outset the Hearing Officer excluded some of the evidence filed by the applicants, as it did not comply with the Civil Procedure Rules; (he remarked, however, that this would not affect the outcome of the case). During the course of the proceedings the opponent had surrendered two of his registrations, which were the subject of a revocation action alleging non-use. The Hearing Officer decided to take no account of these even though they were extant at the date of application. In so doing he contrasted two Registry decisions, Club Soda, BL O/230/98 and Transpay [2001] RPC 191 and preferred the latter.

Under Section 5(2)(b) he found a similarity in respect of all the goods in Class 32 and some of the goods in Class 32. The marks being similar, he considered that there existed a likelihood of confusion and the opposition succeeded in respect of those goods. Under Section 5(3) he found that the opponents had not established a reputation and this ground failed accordingly. Under Section 5(4)(a) the evidence was insufficient and this ground also failed.

Full decision O/021/02 48Kb