Trade mark decision

BL Number
Decision date
20 February 2001
Hearing Officer
Mr M Reynolds
Segafredo-Zanetti SpA
Sega Enterprises Ltd
Sections 5(2)(b), 5(3) & 5(4)(a)


Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • Costs - Redundant pleadings taken into account in the award of costs.


Opposition based on opponent’s various registrations (Community and UK) of the marks SEGA and SEGA (stylised) in Classes 9, 16, 28, 38, 41 and 42, primarily in respect of electronic games apparatus, related software, and theme park and amusement services. Under Section 5(2)(b), the Hearing Officer found the respective marks to be similar, and in applying the usual tests he confined himself to a consideration of what he saw as the Opponent’s strongest case, namely whether there would be a likelihood of confusion if the marks in suit were registered in the face of the opponent’s registrations covering canteen and restaurant services. Even considering that case, however, he was not persuaded that the opponent’s evidence bridged the gap between those services and the "beverages with coffee, coca or chocolate base" covered by the marks in suit. Opposition on that ground therefore failed.

Under Section 5(3), the Opponent relied mainly on its undoubted reputation in Class 9 goods, given the limited use of their marks in respect of refreshment facilities by the relevant date, but the Hearing Officer found that even if beverages sold under the marks in suit were of inferior quality there would be no adverse impact on the opponent’s reputation, and in any event use of the marks in suit on beverages would have no adverse impact on the opponent’s trading opportunities based on its reputation in class 9 goods. Thus, opposition on that ground also failed.

The Hearing Officer also concluded briefly that the opponent would find it no easier to establish misrepresentation and damage for Section 5(4)(a) purposes than the adverse consequences contemplated by Section 5(3).

Full decision O/084/01 PDF document42Kb