Trade mark decision

BL Number
Decision date
3 March 2000
Hearing Officer
Mr M Foley
Cocktail Retailers A/S
Fashion Box SpA
Sections 3(1)(a); 3(1)(b); 5(2)(b), 5(3) & 5(4)(a)


Section 3(1)(a) - Opposition failed.

Section 3(1)(b) - Opposition failed.

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

Section 5(3) - Opposition failed.

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

Points Of Interest

  • 1. Comparison of the marks REPLAY v REPEAT.


The opposition under Section 5 was based on the opponents’ use and registrations of the mark REPLAY in respect of identical goods.

The Hearing Officer, after a brief consideration of the matter, dismissed the objections under Section 3.

Under Section 5(2)(b), the goods being identical, the principal matter to be addressed was a comparison of the marks. In this the Hearing Officer noted that the marks ‘REPEAT’ and ‘REPLAY’ had some visual, aural and conceptual similarity. They were, however ‘ordinary and well known words’ and the endings created ‘a distinctive in their appearance and sound’. They were used in respect of clothing, items normally seen by the purchaser. Overall the Hearing Officer found little likelihood of confusion, and the opposition under Section 5(2)(b) failed accordingly.

This effectively decided the matter under Section 5(4)(a) also.

The goods being identical, no objection under Section 5(3) could be sustained.

Full decision O/082/00 PDF document36Kb