Trade mark decision

BL Number
O/048/05
Decision date
28 February 2005
Hearing Officer
Mr J MacGillivray
Mark
CIS HOME
Classes
06, 09, 19, 20, 35, 36, 37
Applicant
Co-operative Insurance Society Limited
Opponent
CISA SpA
Opposition
Sections 5(2)(b) & 5(4)(a)

Result

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

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

Points Of Interest

  • Comparison of the marks CISA and device v CIS BUILDINGS.

Summary

This was one of five closely related actions (four oppositions and one invalidation) involving the same parties and, mutatis mutandis, brought on the same grounds. The other proceedings are set out in BL O/048/05, BL O/049/05, BL O/050/05 and BL O/051/05. All four oppositions were directed solely at the applications in Classes 6 and 9; in each case the opponent cites the same registration (of the mark CISA in Class 6, in respect of “locks, padlocks and keys”) as the basis of the 5(2) objection.

Having made an assessment of the matter under Section 5(2)(b), by reference to the established authorities, the Hearing Officer concluded that there was indenticality/similarity in respect of some of the goods at issue; the opponent’s mark was highly distinctive and deserving of a wide penumbra of protection; there was visual, aural and conceptual similarity in the marks. In the result he found a likelihood of confusion in respect of some of the goods specified, and the opposition under Section 5(2)(b) succeeded accordingly, in respect of those goods.

Under Section 5(4)(a) however, the Hearing Officer did not consider that the opponent had shown that misrepresentation would occur, and the opposition under that Section failed.

In view of the partial success of both sides the Hearing Officer made no order as to costs.

Full decision O/048/05 PDF document67Kb