Trade mark decision

BL Number

O/057/02

Decision date

7 February 2002

Hearing Officer

Mr J MacGillivray

Mark

e ORACLE BUSINESS EUROPE

Classes

35

Registered Proprietor

Oracle Business Information Limited

Applicants for declaration of invalidity

Oracle Corporation

Application for Invalidation

Sections 47(2)(a) & 47(2)(b) (Sections 5(2)(b) & 5(3)); (Section 5(4)(a))*

Result

Section 47(2)(a) - Application for invalidation successful (Section 5(2)(b))

Points Of Interest

• State of the register : the existence of other registrations in the ownership of the registered proprietor did not disbar the applicants from seeking invalidation.

Summary

The application was based on the applicants’ marks ORACLE registered in classes 16, 35, 36 & 41. The registered proprietor put forward the contention that in view of the existence of other ORACLE marks belonging to them and on the register the applicants were debarred from seeking invalidation of the registration in suit. The Hearing Officer, however, ruled that absent evidence of use this was merely state of the register’ evidence and did not affect his consideration of the application. He therefore went on to consider the matter under Section 5(2)(b), in which he found that the marks were similar, visually, aurally and conceptually, the services were the same or very closely similar; and the customers for those services, though likely to be ‘relatively sophisticated’ were nevertheless likely to be confused. The application under Section 47(2)(a), referring to Section 5(2)(b), succeeded accordingly.

The Hearing Officer did not go on to make formal findings under the other grounds.

Full decision O/057/02 185Kb