Trade mark decision

BL Number
Decision date
15 February 2002
Hearing Officer
Mr M Knight
Bantam Doubleday Dell Publishing Group Inc
Pickering & Chatto Limited
Section 5(2)(b) & 5(4)(a)*


Section 5(2)(b) - Opposition succesful

Section 5(4)(a) - No formal finding

Points Of Interest

  • Honest concurrent use.


The opposition was based on the opponents’ registration of a dolphin and anchor device in Class 16. The Hearing Officer quickly came to the view that the marks were similar and the goods identical. He therefore concentrated on the extent and effect of the honest concurrent user claimed by the applicants, this being one of the relevant factors in determining whether or not there was a likelihood of confusion. The Hearing Officer noted that the material on which he was being asked to base a judgement as to what impact the applicants’ mark might have had on the public’s perception prior to 1989 was "very scant". The "where, when what and to whom?" approach was the correct analysis, he thought, but the "factors identified in PIRIE [1933] RPC 147" ... were "not wholly appropriate for the determination of the issue" since that case dealt with matters under the old law, where registration could take place even where confusion might result. Such an outcome was not possible under the present law, unless the holder of the earlier right consented.

In the result he felt unable to conclude that there would no likelihood of confusion as a result of the applicants’ use and the opposition under Section 5(2)(b) succeeded accordingly.

Full decision O/073/02 PDF document84Kb