Trade mark decision

BL Number
O/063/05
Decision date
14 March 2005
Hearing Officer
Mr M Knight
Mark
CRIMINAL
Applicant
Criminal Clothing Limited
Opponent
Aytan's Manufacturing (UK) Ltd
Opposition
Sections 5(2)(b) & 5(4)(a)

Result

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

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

Points Of Interest

  • 1. Extensions of time.
  • 2. Evidence-in-reply.
  • 3. Comparison of the marks CRIMINAL DAMAGE & device v CRIMINAL

Summary

The opposition was based on registrations of the mark CRIMINAL DAMAGE and device of a skull and cross bones, in Class 25.

Interlocutory issue: Earlier in the proceedings the Registry had granted the opponent an extension of time of one month in which to file evidence-in-reply. The applicant objected to this, and also challenged some of the evidence, claiming that it was not evidence-in-reply. An interlocutory hearing had been held to settle these matters, following which the Registry confirmed the extension of time and ruled that the evidence could be admitted to the proceedings. The applicant requested a written statement of the Hearing Officer's reasons, but as this could not be arranged ahead of the substantive hearing it was agreed that the required statement would form part of the main decision. A detailed explanation of the Hearing Officer's assessment and rulings on these two matters therefore appears in this decision.

Section 5(2)(b): Turning to the Section 5(2)(b) objection the Hearing Officer noted that the similarity or identicality of the goods had been conceded. He therefore proceeded to a comparison of the marks and an assessment of the likelihood of confusion. In the result he found the marks shared a degree of oral/aural and conceptual similarity, and overall he found a likelihood of confusion. The opposition under Section 5(2)(b) succeeded accordingly.

Section 5(4)(a): Having reviewed the evidence the Hearing Officer concluded that the opponent enjoyed a goodwill in the words CRIMINAL DAMAGE, the applicant's use of the mark applied for would amount to a misrepresentation and damage would result.

The Section 5(4)(a) opposition succeeded, also.

The Hearing Officer ruled that each party should bear its own costs in respect of the interlocutory issue, but he awarded costs to the opponent in respect of the substantive oppositions.

Full decision O/063/05 PDF document160Kb