Trade mark decision
- BL Number
- O/082/05
- Decision date
- 23 March 2005
- Hearing Officer
- Mr M Foley
- Mark
- VPDQ
- Classes
- 09, 36, 38, 42
- Applicant
- Imation IT Solutions Limited
- Opponent
- Barclays Bank Plc
- Opposition
- Section 5(2)(b), 5(3) & 5(4)(a)
Result
Section 5(2)(b): - Opposition successful in respect of Classes 9, 26 & 42. Failed in respect of Class 38.
Section 5(3): - Not considered
Section 5(4)(a): - Not considered
Points Of Interest
- None
Summary
The opponent is these proceedings (Barclays) owns registrations of the marks PDQ, ePDQ and EPDQ in Classes 9, 36 and 42. Barclays also filed evidence of extensive use and promotion of their marks PDQ from 1986 and ePDQ from 1998 onwards in respect of payment systems of credit card and other financial transactions. The Hearing Officer accepted that Barclays have a reputation and goodwill in both marks and that the "e" in the ePDQ mark would indicate to the users electronic or internet services.
The applicant (Imation) provide a computer software product which allows traders to verify payment data provided by customers and other traders. VPDQ is an acronym for "Verified Payment Data Query". Imation also draws attention to the descriptive connotations of Barclays marks in that PDQ means "Pretty Damn Quick".
Under Section 5(2)(b) the Hearing Officer compared Imation’s goods and services with those listed in Barclay’s registrations and concluded that identical and similar services were at issue. However, he did not consider the services listed in Class 38 to be similar to Barclays goods or services. As regards the respective marks VPDQ and PDQ, ePDQ and EPDQ the Hearing Officer considered the marks to be visually and conceptually close in that the marks would be seen as a string of letters. Overall the Hearing Officer considered that confusion of the public was likely and opposition succeeded on this ground in respect of Classes 9, 36 and 42. In Class 38 where the services were not similar, opposition failed.
In view of his decision under Section 5(2)(b) the Hearing Officer noted that the ground under Section 5(3) fell away.
In respect of Section 5(4)(a) the Hearing Officer observed that if he had needed to consider this ground in detail it was likely that Barclays would have succeeded in view of their proved reputation. However, in view of his decision under Section 5(2)(b) the Hearing Officer saw no need to consider this ground in detail.
Full decision O/082/05 
122Kb
