Trade mark decision

BL Number
O/101/08
Decision date
9 April 2008
Hearing Officer
Mr G Salthouse
Mark
ENTERPRISE IG (series)
Classes
35, 42
Applicants
Enterprise 1G Ltd
Opponents
IG Design SA
Opposition
Sections 3(6); 5(2)(b); 5(3) & 5(4)(a)

Result

Section 3(6): Opposition failed. Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed. Section 5(4): Opposition failed.

Points Of Interest

  • Comparison of the mark I.G.DESIGN v ENTERPRISE IG

Summary

The opposition was based on the opponents' ‘CITY IG DESIGN’ registered in Class 42. They also alleged that the applicants included an ex-employee of theirs and they had applied in bad faith.

The Hearing Officer considered firstly the ground based on Section 3(6). Although the opponents had secured a victory in an infringement action in France against the applicants the Hearing Officer nevertheless concluded that their claims of bad faith was “entirely without merit” and he dismissed it.

Turning to the Section 5(2)(b) objection the Hearing Officer concluded that the opponents’ use of their mark in France satisfied the Proof of Use requirements even though it had not been used in the UK; he did however decide that they did not qualify for enhanced protection by reason of reputation.

Having compared the marks and services specified the Hearing Officer found no likelihood of confusion and the Section 5(2)(b) opposition failed.

The Section 5(4)(a) objection also failed and the evidence of reputation was insufficient to support an objection under Section 5(3). It also did not suggest unfair advantage or show detriment. The opposition therefore failed on all grounds.

Full decision O/101/08 PDF document100Kb