Trade mark decision

BL Number

O/059/04

Decision date

10 March 2004

Hearing Officer

Mr A James

Mark

CREDIT MASTER

Classes

09, 16, 35, 36, 42

Applicant

Hitachi Credit (UK) Plc

Opponent

Mastercasrd International Inc

Opposition

Sections 5(2)(b); 5(3) & 5(4)(a)

Result

Section 5(2)(b) - Opposittion failed.

Section 5(3) - Opposittion failed.

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

Points Of Interest

• 1. Amendment of pleadings; recent developments in case law.
• 2. Comparison of the marks MASTERCARD v CREDIT MASTER.
• 3. Costs in proceedings before the Registrar; behaviour of parties.

Summary

The opposition was based on use and registrations of the mark MASTERCARD.

At the hearing the opponent sought leave to amend their pleadings under Section 5(3) to include an objection in respect of same or similar goods/services. Having considered the application the Hearing Officer refused to allow the pleadings to be amended.

Also during the course of the hearing, the applicant offered an amendment of their Class 36 specifications to make it clear that the services were “for businesses”. The Hearing Officer therefore proceeded on the basis of the revised specification.

The services were similar, he found but the marks had “a very low level of similarity”. The opponent, “at a general level” had a reputation for financial services but when the public thought about MASTERCARD they would think, in particular, of the famous credit card. The opponent’s best case was in respect of the Class 36 services but even allowing for their reputation the Hearing Officer did not see a likelihood of confusion arising from use of the mark CREDIT MASTER. The Section 5(2)(b) objection failed accordingly.

Under Section 5(3) the Hearing Officer did not believe that the similarity between the marks was enough for the average consumer to see any link between them, but even if he was wrong in this, he did not find that the opponent had made out a case of damage to their reputation.

This effectively decided the matter under Section 5(4)(a) also, and the Hearing Officer made an award of costs to the applicant which reflected, to some extent, unhelpful behaviour of both sides.

Full decision O/059/04 61Kb