Trade mark decision

BL Number
O/081/08
Decision date
18 March 2008
Hearing Officer
Mr M Bryant
Mark
FLY FIRST FLY FIRST & device (series) Two applications
Classes
16, 36, 39
Applicants
Fly First PLC
Opponents
FirstGroup PLC
Opposition
Sections 3(1)(b); 3(1)(c); 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(1)(b): Opposition partially successful. Section 3(1)(c): Opposition partially successful. Section 5(2)(b): Opposition partially successful. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

  • Comparison of the marks FLY FIRST v FIRST & device.

Summary

The opposition was based on a number of ‘FIRST’ marks.

The Hearing dealt firstly with the Section 3(1)(c) objection to the application for registration of the series of marks comprising the words FLY FIRST and the device of a feather. The presence of the feather device, he said, meant that the marks did not “consist exclusively of signs or indications …. etc”. Neither were they devoid of distinctive character. The 3(1)(d) and 3(1)(c) objections to that application failed accordingly. Turning next to the word only mark, FLY FIRST, he concluded that it was no more than “an obvious abbreviation of the term FLY FIRST CLASS as such it would be barred from registration by the terms of Section 3(1)(c) for any goods or services relating to the provisions of first class air travel. Having reduced the specifications accordingly he went on to consider the surviving goods/services under the terms of Section 3(1)(b). In the result the objection under 3(1)(b) to the remaining specification failed.

Going on to consider the objections under Section 5(2)(b) he first ruled that the opponents’ best case rested on their mark FIRST & device of a stylised letter f. Again he considered firstly the objections to the FLYFIRST and feather device marks. In these he found “only a modest degree of similarity” with the opponents’ mark. Having compared the goods/services the Hearing Officer eventually found a likelihood of confusion in respect only of “passenger transport services”. The opposition failed in respect of all the remainder.

Turning to the word only mark he found some conceptual similarity in the marks and a similarity in all the goods/services save for some stationery items. Overall he found no likelihood of confusion in respect of these.

The opposition under Section 5(4)(a) failed as did the Section 5(3) objection.

The opponents had achieved a partial success and the Hearing Officer made an award of costs in their favour. (Note: this decision was followed by a supplementary decision, BL O/099/08 q.v.)

Full decision O/081/08 PDF document323Kb