Trade mark decision

BL Number
O/092/05
Decision date
7 April 2005
Hearing Officer
Mr M Reynolds
Mark
OKA
Classes
02, 04, 08, 11, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 35, 42
Applicant
Oka Direct Limited
Opponent
Hokochemie GmbH
Opposition
Section 5(2)(b)

Result

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

Points Of Interest

  • 1. The applicant appealed to the Appointed Person. In her decision dated 6 February 2006 the Appointed Person upheld the Hearing Officer’s decision and dismissed the appeal.

Summary

The opponent owns a registration for the mark OKO and device in respect of identical and similar goods as those listed in the applicant’s Class 2 application. These opposition proceedings relate only to that Class.

The opponent claimed to have used its mark from 1998 onwards but as no real evidence of use was before the Hearing Officer, it was not a factor in his decision.

The applicant also claimed some use on paints from May 2002 onwards (the relevant date of these proceedings is 28 July 2003) and stated that the only goods of interest to the opponent is specialised agricultural chemicals. It submitted that there was in fact no similar goods at issue. The applicant also claimed that the opponent refers to its mark as HOKO (the company name is Hokochemie); had registered the mark HOKO as an International mark and that at the registration stage in the UK it had referred to its mark as HOKO when seeking consent to registration from another party. The opponent disputed these claims and said that HOKO and OKO and device were distinct from the company name.

Under Section 5(2)(b) the Hearing Officer noted that he had to compare the respective specifications in Class 2. On that basis identical and similar goods were at issue.

In considering the opponent's mark the Hearing Officer concluded that it was unlikely that the device element would be seen as a letter H and that consequently the mark would be seen as OKO and device rather than HOKO. Thus while the device element could not be overlooked entirely the main comparison of the respective marks was of the element OKO with OKA. Despite the different endings, and the presence of a device in the opponent’s mark, the Hearing Officer considered the marks to be visually similar. Similarity was even stronger from a phonetic view point and on the basis of imperfect recollection. Overall the Hearing Officer concluded that there was a likelihood of confusion and that the opposition was successful.

Full decision O/092/05 PDF document34Kb