Trade mark decision

BL Number
O/095/98
Decision date
29 April 1998
Hearing Officer
Mr N Harkness
Mark
CD BOOK
Classes
09, 11
Applicant
Wer Liefert was? GmbH
Opponent
Reed Tele publishing Ltd
Opposition
Section 3(1)(b), (c) & (d)

Result

Section 3(1)(b), (c) & (d) - Opposition succeeded.

Points Of Interest

  • Following the hearing the applicants requested permission to withdraw their applications. However, the opponents wished the Hearing Officer to issue his decision and that he draw attention to the applicants concession that the term CD-BOOK is not a distinctive element.

Summary

The opponents claimed to have used the term CD-Book in relation to a range of directories under the titles KOMPASS CD-BOOK and KELLY’S CD-BOOK. They submitted that in relation to information services provided by way of CD-ROMS the term CD-BOOK would be regarded as a generic term and therefore open to use by all traders. Also the German words appearing in the mark were descriptive words meaning "Who delivers what" or "Who supplies what" and these words in combination with a device of an open book and a CD disc, added nothing to the distinctiveness of the mark as a totality.

Initially the applicants defended their position and pointed to the fact that the term CD-BOOK (solus) was registered in the Republic of Ireland. However, at the Hearing their representative admitted that the term CD-BOOK was not registrable in the prima facie.

Under Section 3(1)(b), (c) and (d) the Hearing Officer considered the individual elements making up the mark and then considering it as a totality. He concluded that the mark in its totality simple brought together a combination of words and devices which referred directly to the character and format of the goods and services and therefore it lacked distinctiveness. Thus the opponents succeeded on this ground.

A similar finding was made in relation to the device and CD-BOOK mark.

Full decision O/095/98 PDF document27Kb