Trade mark decision

BL Number

O/105/04

Decision date

15 April 2004

Hearing Officer

Mr D Landau

Mark

DEVICE ONLY MARK

Classes

03, 05

Applicant

Robert McBride Ltd

Opponent

Reckitt Benckiser (UK) Limited

Opposition

Sections 3(6); 5(2)(b) & 5(4)(a)

Result

Section 3(6) - Opposition successful.

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

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

Points Of Interest

• 1. Bad faith; bona fide intention to use; 2D marks used as 3D goods.

Summary

The opposition was based on registrations of the word CRYSTAL and registrations of device marks which were described as 'snowflake' marks.

The Hearing Officer dealt first with the opposition under Section 5(2)(b) based on the word mark CRYSTAL. He lost no time in finding no similarity between this mark and the applicants’ mark which, it was claimed, resembled a crystal.

The Hearing Officer next turned to consider the alleged clash between the opponent' 'snowflake' 3D marks and the applicants' hexagonal device mark (which was not a 3D mark). He found the claim of similarity 'untenable'. Without a similarity in the marks the opposition under Section 5(2)(b) could go no further.

This effectively decided the matter under Section 5(4)(a) also.

Finally, the Hearing Officer considered the matter under Section 3(6), in which it was claimed that the applicants' undertakings under Section 32(3) had not been discharged. Their application, it could be shown, had been clearly and deliberately chosen to apply to a two-dimensional mark, whereas they had used it and had intended to use it as the shape of the goods themselves. This had allowed them to "pass under the radar and avoid possible challenge under Section 3(1)(b) and or (c) of the Act". The opponents had put forward a good prima facia case which the applicants had failed to rebut. The Hearing Officer conlcuded that the application had indeed been made in bad faith and the opposition succeeded accordingly.

Full decision O/105/04 136Kb