Trade mark decision

BL Number
O/098/08
Decision date
7 April 2008
Hearing Officer
Mr M Bryant
Mark
TEFEX
Classes
08, 11
Applicant
Tollco AB
Opponent
E.I. Pont De Nemours & Co
Opposition
Sections 5(2)(b), 5(3), 5(4)(a) & Section 56

Result

Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed.

Points Of Interest

  • None

Summary

The opponent owns two UK registrations for the mark TEFLON in Class 21 and a Community registration covering goods in Classes 8 and 21. The opponent also filed evidence of use of its mark and even though the evidence was poorly focused and lacked clarity, the Hearing officer accepted the TEFLON trade mark has a world wide reputation for certain non-stick products and that this reputation extends to a range of goods in Class 21 including cooking utensils and kitchen utensils.

With regard to the proof of use provisions the Hearing Officer accepted that there had been use in relation to a range of goods in Class 21 but he noted that no user had been shown in relation to razors and cutlery in Class 8.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue in the respective Class 21 designations and went on to compare the respective marks TEFLON and TEFEX. While he noted that there was a slight aural similarity the marks were different visually, and there was no conceptual similarity. Overall he concluded that there was no likelihood of confusion of the public even taking into account the significant reputation of the TEFLON mark.

The Hearing Officer accepted that the opponent had a sufficient reputation in its mark to support its grounds under Sections 5(3) & 5(4)(a) but its opposition failed in respect of these grounds because of his finding that the respective marks were not similar. The ground under Section 56 was also dismissed.

Full decision O/098/08 PDF document118Kb