Trade mark decision

BL Number

O/086/06

Decision date

23 March 2006

Hearing Officer

Mrs A Corbett

Mark

PENNY BLACK

Classes

18, 25

Applicant

Mr & Mrs Aldridge

Opponent

Max Mara Fashion Group SRL

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): Opposition successful. Section 5(3): Not considered. Section 5(4)(a): Not considered.

Points Of Interest

• See also BL O/378/02.

Summary

This application was previously the subject of a Registrar’s Hearing Officer decision dated 23 September 2001. That decision was appealed to the Appointed Person who set aside the Hearing Officer’s decision in part (BL O/378/02) and remitted the application back to the Registrar where it was subject to re-examination. The application was subsequently advertised with a specification reading “Wallets in Class 18 and bags in Class 25”.

The opponent in these proceedings owns the marks PENNYBLACK, PENNYPLUS, PENNYPULL and NEWPENNY EASYWEAR in Class 25 and PENNYPLUS in Class 18. The opponent also filed evidence of use of its marks but this evidence was somewhat vague and lacked specific detail. The Hearing Officer concluded that the evidence filed was insufficient to convince her that any of the marks relied upon by the opponent had an enhanced reputation because of the use made of them.

In comparing the respective marks under Section 5(2)(b) the Hearing Officer accepted that the respective PENNY BLACK marks were very similar and he also decided that the mark in suit was not confusingly similar to the opponent’s other PENNY marks.

As regards the respective goods the Hearing Officer noted that the opponent’s mark PENNYBLACK covered a wide range of goods in class 25 including what could be described as accessories to clothing eg belts, scarves and foulards. She concluded that such goods were very similar to wallets and bags, the applicant’s goods. Thus similar marks and similar goods were at issue and there was a likelihood of confusion. Opposition succeeded on this ground.

The Hearing Officer did not consider the grounds under Sections 5(3) and 5(4)(a) in detail but observed that while the opponent filed a substantial volume of evidence, that evidence was open to criticism and did not prove that any of the opponent’s marks had a reputation or goodwill in the UK in relation to articles of clothing.

Full decision O/086/06 84Kb