Trade mark decision

BL Number

O/110/03

Decision date

17 April 2003

Hearing Officer

Mr D Landau

Mark

CARTOON NETWORK

Classes

09, 16, 18, 25, 28, 30, 32, 35, 41, 42

Applicant

Cartoon Network L.P.LLLP

Opponent

Cartoon Triangle Apparel Inc

Opposition

Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b) - Opposition essentially successful.

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

Points Of Interest

• 1. Restricted specifications proposed.
• 2. Hairnets proper to Class 26 (not Class 25).

Summary

The opponents opposition was based on their ownership of registrations for the marks CARTOON and CARTOON (stylised) and device in Classes 18 and 25. The opposition related only to Classes 18, 25 and 35.

The relevant date of the proceedings was 19 August 1997 and both parties filed evidence of use. However, such evidence as was filed was unsatisfactory and not supported by the associated documentation and the Hearing Officer concluded that neither party could be assisted by the use claimed.

Under Section 5(2)(b) the Hearing Officer carried out a detailed comparison of the respective goods and services and concluded that to a large extent they were either identical or similar. He did, however, note some goods and services which were not similar and at the conclusion of this decision suggested restricted specifications which would avoid conflict with the opponents.

As regards a comparison of the respective marks the Hearing Officer considered CARTOON to be the distinctive and dominant element in the respective marks and was conscious of the fact that the word NETWORK was at least semi-descriptive in the context of a “network of shops” etc. He thus concluded that the respective marks were sufficiently similar for customers to assume that the goods came from linked undertakings. Opposition therefore succeeded under Section 5(2)(b) in respect of identical and similar goods and services.

As regards Section 5(4)(a) – Passing Off – the Hearing Officer dismissed this ground as the opponents had filed insufficient evidence to show that they had a reputation and goodwill in their mark.

Full decision O/110/03 126Kb