Trade mark decision
- BL Number
- O/088/08
- Decision date
- 26 March 2008
- Hearing Officer
- Ms L Adams
- Mark
- TERRAPIN
- Classes
- 16, 35, 38, 41
- Applicant
- Terrapinn Holdings Pty Ltd
- Opponent
- Telefonica SA
- Opposition
- Section 5(2)(b)
Result
Section 5(2)(b): Opposition unsuccessful
Points Of Interest
- None
Summary
The opponent relied upon four registrations for the marks TERRA and TERRA & geometric device in a range of Classes including 16, 35, 38 and 41. The Hearing Officer had little difficulty in concluding that identical and closely similar goods and services were at issue.
As regards a comparison of the respective marks the Hearing Officer accepted that there was some visual similarity because the whole of one of the opponent’s marks is encompassed within the applicant’s mark. However, the Hearing Officer concluded that there was unlikely to be any aural confusion because the respective words will be pronounced very differently.
The Hearing Officer was of the opinion that the applicant’s marks so closely resembles the well known English word TERRAPIN, meaning water tortoise, that consumers would assume this word to be the mark in suit. Also while some might recognise TERRA as meaning earth, it was possible that others would see it as an invented word. Whatever was the case the Hearing Officer concluded that the respective marks were conceptually different and observed that this went some way to offset any visual or aural similarities. Overall the Hearing Officer concluded that there was no likelihood of confusion and that the opposition failed.
Full decision O/088/08 
58Kb
