Trade mark decision

BL Number

O/092/04

Decision date

31 March 2004

Hearing Officer

Mr G Salthouse

Mark

BREATHE EASY

Classes

05

Applicant

Reckitt Benckiser Healthcare (UK) Limited

Opponent

Norton Healthcare Limited

Opposition

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

Result

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

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition successful.

Points Of Interest

• 1. None

Summary

The opponent's opposition was based on their ownership of two registrations in Class 5 for the mark EASI-BREATHE in respect of the same and similar goods as those in the applicants application. The opponent also claimed extensive use of their mark but their evidence was not well focused since it also included use on inhalers (Class 10 goods). The opponent did not provide separate figures for their Class 5 goods though it was clear from the evidence presented that such goods were included in the inhalers when sold.

The applicant also claimed some use of their mark but such use was in close association with their well known LEMSIP mark.

Under Section 5(2)(b) the Hearing Officer compared the respective marks BREATH EASY and EASI-BREATHE and had little difficulty in deciding that they were confusingly similar. Opposition thus succeeded on this ground.

Under Section 5(3) the Hearing Officer was not convinced that the opponent had established that they had a significant reputation in their mark at the relevant date and he dismissed this ground of opposition.

Under Section 5(4)(a) the Hearing Officer accepted that the opponent had some reputation and goodwill at the relevant date. In view of the fact that identical goods are at issue and the respective marks are very similar the Hearing Officer decided that the opponent succeeded on this ground.

Full decision O/092/04 33Kb