Trade mark decision

BL Number
Decision date
5 April 2007
Appointed Person
Mr Richard Arnold QC
WI FI & device WI-FI (2 seperate marks)
Wi-Fi Alliance
Wilhelm Sihn Jr KG
Section 5(2)(b)


Section 5(2)(b): Appeal dismissed.

Points Of Interest

  • 1. See also Hearing Officer’s decision dated 16 October 2006. (BL O/290/06)
  • 2. Decision in line with decision taken by OHIM Case R 864/2005-1. First Board of Appeal dated 26 October 2006.


In his decision dated 16 October 2006 (BL O/290/06) the Hearing Officer had decided that opposition against the above two marks failed. The opponent appealed to the Appointed Person.

On appeal in relation to the Wi-Fi mark the opponent contended that the Hearing Officer had failed to apply the interdependency principle. Secondly, had not taken sufficient account of the distinctive nature of the opponent’s mark WISI and had wrongly concluded that the respective goods would be purchased with care. Also he was wrong to conclude that the respective marks were phonetically dissimilar and that visually they were not very similar. Finally he had failed to make allowance for imperfect recollection.

The same points were made about the decision in relation to the WI-FI and device mark with the additional criticism being made that the Hearing Officer had been wrong to conclude that the respective marks were not visually similar.

The Appointed Person noted that no error of principle had been identified and he also noted that the Hearing Officer had considered fully some of the points complained about. Having reviewed carefully the Hearing Officer’s decision in relation to the word mark WI-FI he concluded that the Hearing Officer had reached the right conclusions and he dismissed the appeal.

In relation to the word and device application the Appointed Person thought the Hearing Officer had wrongly concluded that there was no visual similarity between the respective marks. This was because the word WI-FI was prominent and would be clearly recognised in the composite mark. The Appointed Person accepted that the Hearing Officer had been correct in finding that opposition should also fail in respect of this mark.

Full decision O/104/07 PDF document37Kb