Trade mark decision

BL Number
Decision date
22 March 2005
Appointed Person
Mr Richard Arnold QC
12, 35
Julian James
Smart GmbH
Appeal against the decision of the Registrar's Hearing Officer in opposition proceedings.


Appeal allowed in respect of the Class 12 goods but dismissed in respect of the Class 35 services.

Points Of Interest

  • 1. Appeals to the Appointed Person:-standard of review; reconsideration of a decision of the (tribunal) below; an error of principle having been identified it is unnecessary to consider if other errors have also been made; the whole of that area of the decision is open for reconsideration.


At first instance (see BL O/251/04) the Hearing Officer had found no likelihood of confusion and the opposition under Section 5(2)(b) had failed accordingly. The Section 5(4)(a) objection had gone down also.

The opponent appealed to the Appointed Person against these findings (but conceded that the grounds of opposition stood or fell together; hence, there was only the 5(2)(b) ground to consider). There were four main grounds for the appeals: failure to consider the Class 12 and Class 35 aspects separately; errors in comparisons of the goods/services; errors in the comparison of the marks and finally failure to apply the "interdependency principle" enunciated by the ECJ.

Having reviewed the Hearing Officer's decision the Appointed Person concluded that the first and fourth of these criticisms were well founded. The Hearing Officer's approach had not admitted of the possibility that "the distinctiveness of the mark could mean that there was a likelihood of confusion for less similar services than if the mark and not been distinctive".

These flaws having been identified, the whole of the Section 5(2)(b) decision was open for reconsideration, decided the Appointed Person; it was not necessary to consider whether the Hearing Officer had also made the other errors alleged by the opponent.

After detailed reconsideration of the matter the Appointed Person concluded that the appeal should be allowed in respect of the Class 12 goods but dismissed the appeal with respect to the Class 35 services.

The Hearing Officer's original costs order was set aside, and no award of costs was made in respect of the appeal.

Full decision O/079/05 PDF document37Kb