Trade mark decision

BL Number
Decision date
25 January 2001
Hearing Officer
Mr A James
38, 42
The Minister for the Civil Service
Deutsche Telecom AG
Section 5(2)(b)


Section 5(2)(b) - Opposition failed

Points Of Interest

  • Costs: The opponents filed opposition on a large number of grounds but dropped most of them just prior to the hearing. The applicants were not advised of this until the day before the hearing. In the circumstances the Hearing Officer made a modest increase in the costs awarded to the applicant.


The opponents based their opposition on ownership of a number of TNET marks but the Hearing Officer concluded that their best case was based on a registration of that mark in classes 38 and 42 where identical or near identical services are at issue. The dispute therefore rested on a comparison of the marks as applied for and the opponents TNET mark.

In his comparison of the marks The Hearing Officer noted that the suffix NET has a recognised meaning for the services at issue but even so it was necessary to compare the marks as wholes. While the Hearing Officer noted that there was some visual, aural and conceptual similarities between the two marks he concluded that there was very little likelihood of one mark being mistaken for the other in normal and fair use. In making his decision the Hearing Officer took the view that the opponents mark had limited distinctive character consisting of a mere letter T (perhaps standing for telecommunications) and the descriptive word NET.

Full decision O/038/01 PDF document33Kb