Trade mark decision

BL Number

O/100/98

Decision date

14 April 1998

Hearing Officer

Mr M Reynolds

Mark

HI-VIZ

Classes

28

Applicant

Middy Tackle International Ltd

Opponent

Fox Design International Ltd

Opposition

Sections 3(1)(b), 3(3)(b), 5(2)(b) & 5(4)(a)

Result

Section 3(1)(b) - Opposition failed.

Section 3(3)(b) - Opposition failed.

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

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

Points Of Interest

• The Hearing Officer observed that the application for a series of four marks could not be considered a proper series within the meaning of Section 41(2). Consequently, no action could be considered as the matter was not before him.

Summary

The opponents objected to the first two marks of the series under Section 3(1)(b) on the basis that they were descriptive of ‘high visible’ items of fishing tackle and thus devoid of distinctive character. The Hearing Officer accepted that ‘Hi’ is a recognised abbreviation for HIGH but was less convinced with regard to ‘VIZ’ or ‘VIS’ meaning VISIBLE since such a claim was not supported by UK dictionaries. Opposition thus failed on this ground.

The opponents ground under Section 5(2)(b) was based on a later filed application for registration of HI-VIZ as a community mark. As this did not constitute an earlier right, this ground of opposition failed.

The ground under Section 3(3)(b) was related to claimed use by the opponents of their mark HI-VIZ and the Hearing Officer determined that the matter should thus be considered under Section 5(4)(a) - Passing Off. However, he found formally that the opposition based on Section 3(3)(b) failed.

Under Section 5(4)(a) - Passing Off - the Hearing Officer considered the opponents’ claim that they had used their mark from April 1994 and that they had a reputation in their mark when the applicants filed their application in June 1996. The Hearing Officer found some evidence of use as a secondary mark in 1994 and again in 1995 and 1996 but he concluded from the limited amount of information before him that the opponents had not established that they had a protectable goodwill at the relevant date. Opposition thus failed on this ground.

The applicants had also claimed use from April 1994 but the Hearing Officer noted that the defects apparent in the opponents evidence was also present in the applicants evidence.

Full decision O/100/98 23Kb