Trade mark decision

BL Number: O/024/99
Decision date: 22 January 1999
Hearing Officer: Dr W J Trott
Mark: PLANETARIAN
Classes: 41, 42
Applicant: Graham Skinner
Opponent: Tussauds Group Limited
Opposition: Sections 3(1), 3(6) and 5(4)(a)

Result

Section3(1) - opposition partially successful.

Section 3(6) - opposition failed.

Section 5(4)(a) opposition failed.

Points Of Interest

The closeness of an invented word to a wholly descriptive word can result in refusal under Section 3(1)(b).

Summary

GS applied to register the mark PLANETARIAN in Classes 41 and 42. TGL (owners of the London Planetarium) opposed the application:- under Section 3(1) it being devoid of distinctive character; under Section 5(4)(a), use being preventable under law of passing-off; under Section 3(6), the application having been made in bad faith. The Hearing Officer found that the mark applied for was so close in appearance and pronunciation to a wholly descriptive word, and was also a word that might serve to designate a characteristic of planetaria that it should be refused under Sections 3(1)(b) and 3(1)(c). The opposition failed under both Section 3(6) and Section 5(4)(a). The application could proceed but with a restricted specification, designed to overcome the objections under Sections 3(1)(b)(c).

Full decision O/024/99 36Kb