Trade mark decision

BL Number
O/042/98
Decision date
4 February 1998
Hearing Officer
Mr S J Probert
Mark
RESPOND
Classes
09
Applicant
Initiative Software Applications Ltd
Opponent
Phoenix Software and Consultancy Services Ltd
Revocation
Section 5(4)

Result

Section 5(4) - Opposition unsuccessful

Points Of Interest

  • None

Summary

The opponent had commence to use their RESPOND mark in October 1993 on a limited scale whereas the applicants had only commenced to use their RESPOND mark in December 1993 and applied to register it on 7 December 1994. The Hearing Officer considered the passing off objection in the light of the tests set down in the Advocaat case and decided that the opponents evidence of use was insufficient to establish a reputation or goodwill at the relevant date. Additionally while the goods at issue were similar the reality of the situation in the marketplace was that any confusion which might arise would not result in significant damage (in a passing-off sense) to the opponents business. Opposition unsuccessful.

Full decision O/042/98 PDF document20Kb