Trade mark decision

BL Number
O/120/03
Decision date
29 April 2003
Hearing Officer
Mr M Reynolds
Mark
JUSTICEXPRESS
Classes
42
Applicant
Russell Jones & Walker
Opponent
Context Limited
Opposition
Sections 5(1), 5(2)(a), 5(2)(b), 5(3) & 5(4)(a)

Result

Sections 5(1) & 5(2) - Opposition failed.

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

Section 5(3) - Opposition failed.

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

Points Of Interest

  • 1. Costs. Applicants request to increase award of costs because of opponents' behaviour.

Summary

The opponents’ opposition was based on their ownership of a registration of the mark JUSTIS in Class 42 and a claim to use of their mark in relation to the provision of information about legal matters from on-line databases and in CD-ROM format. Turnover in the years 1996-2000 was in excess of £2m and advertising expenditure averaged some £200k per annum over the same period.

The applicants say their mark is to be used in relation to the pursuit of legal claims on behalf of individuals and have adopted other marks such as “libelxpress” and “Health & Safety Express”. They say that they don’t use their marks until registration is achieved and complain that the opponents have delayed matters unnecessarily by their reluctance to negotiate etc.

Under Section 5(2)(b) the Hearing Officer noted that as described the two parties activities were different but the respective specifications covered identical or very similar services and he had to decide the dispute in the light of such specifications. In comparing the respective marks JUSTIS and JUSTICE XPRESS the Hearing Officer noted that the opponents’ mark was among the market leaders in the provision of database services and had therefore an enhanced degree of distinctiveness. He also believed that part of its distinctive character rested on the unusual spelling of the word “Justice”. The Hearing Officer went on to find that the respective marks had only a modest degree of similarity and that the word ‘Justice’ was a relatively weak element for the services at issue. Overall he concluded that there was no likelihood of confusion and opposition failed on this ground.

The grounds under Sections 5(1) and 5(2), 5(3) and 5(4)(a) were dealt with only briefly. In the case of Sections 5(1) and 5(2) it was self- evident that the respective marks were not identical; under Section 5(3) the opposition was not pursued to any significant extent and under Section 5(4)(a) the opponents could not be in any better position as compared to Section 5(2).

As regards costs the applicants made a number of complaints about the opponents’ behaviour and the Hearing Officer dealt with the points made in some detail. He went on to increase the costs awarded to the applicants by some £200 but refused to award costs for loss of earnings.

Full decision O/120/03 PDF document74Kb