Trade mark decision

BL Number
O/039/98
Decision date
9 March 1998
Hearing Officer
Mr M Tuck
Mark
SPEEDMASTER
Classes
02
Applicant
Imperial Chemical Industries Plc
Opponent
Wickes PLC
Opposition
Sections 3(1)(b) & (c), 5(2)(b) & 5(4)(a)

Result

Section 3(1)(b) & (c) - Opposition failed.

Section 5 (2)(b) - Opposition succeeded.

Section 5(4)(a) - Opposition failed.

Points Of Interest

  • 1. Survey Evidence : The opponents filed survey evidence but the Hearing Officer gave it no weight since it had not been carried out in accordance with established guidelines.

Summary

The opponents opposition was based on their ownership of two registrations in Class 2 of the marks WICKES MASTER and MASTER in respect of identical and similar goods to those of the applicant. They filed evidence of use of the mark WICKES MASTER but no real evidence of use of MASTER solus.

Under Section 3 the Hearing Officer noted the objections raised by the opponents, but considering the construction of the mark applied for and Registry practice in the examination of MASTER marks, he decided that the mark applied for was not barred from registration by the provisions of Section 3.

With regard to Section 5(2)(b) the Hearing Officer noted that identical and similar goods were at issue and went on to compare the respective marks. While he considered SPEEDMASTER and WICKES MASTER to be not confusingly similar he went on to conclude that the marks SPEEDMASTER and MASTER were similar since the whole of the opponents mark was included in the applicant’s mark and the other element of the applicant’s mark might be seen simply as a descriptor.

The opponents failed in their ground under Section 5(4)(a) - Passing Off - since the marks SPEEDMASTER and WICKES MASTER were not similar and no evidence had been filed by the opponents to show that they had a reputation, at the relevant date, in the mark MASTER solus.

Full decision O/039/98 PDF document25Kb