Trade mark decision

BL Number
Decision date
3 April 2003
Hearing Officer
Dr W J Trott
Richard Conroy
SmithKline Beecham Plc
Sections 5(2)(b); 5(3) & 5(4)(a)


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

Section 5(3) - Opposition successful.

Section 5(4)(a) - No formal finding.

Points Of Interest

  • 1. Well known marks : nature of reputation did not help in establishing likelihood of confusion.
  • 2. Tarnishing of reputation of opponents’ mark.
  • 3. &quot:Blurring&quot of opponents reputation.
  • 4. Comparison of the marks NIGHT NURSE v NIT NURSE


The mark opposed was sought to be registered in Class 3 in respect of “oils and shampoos for the control of head lice”. The opponents mark ‘NIGHT-NURSE’ was registered in Class 5 in respect of decongestants for relief of respiratory conditions.

The Hearing Officer first considered the respective goods; after a detailed consideration of the matter he found these were ‘different, but not significantly different’.

In comparing the marks the Hearing Officer declined to consider the applicant’s livery; he would have regard only to the ‘notional and fair use’ of the mark as applied for. The marks he decided were similar but did not have the ‘overwhelming similarity’ suggested by the opponents’ representative. In appraising the distinctive character of the opponents’ mark the Hearing Officer rejected the view that fame militates against confusion, but he nevertheless came to the view that the nature of the opponents’ reputation in this case, did not help to establish a likelihood of confusion. In the result he found the opponents did not succeed under Section 5(2)(b).

Under Section 5(3), however, the Hearing Officer having found the marks similar and the goods dissimilar he eventually decided that the use of the applicant’s mark on the goods specified would result in a ‘tarnishing’ of the opponents’ reputation. The opposition was successful under that Section.

The Hearing Officer made no formal finding under Section 5(4)(a) beyond remarking that he thought the opponents would not be likely to establish the necessary ‘misrepresentation’

Full decision O/085/03 PDF document75Kb