Trade mark decision

BL Number
O/126/02
Decision date
19 March 2002
Hearing Officer
Mr S P Rowan
Mark
DINOS
Classes
29
Applicant
Constandinos Georgio Sideras
Opponent
Bernard Matthews Plc
Opposition
Sections 5(2)(b) & 5(4)(a).

Result

Section 5(2)(b) - Opposition succeeded

Section 5(4)(a) - Opposition failed

Points Of Interest

  • 1. Honest Concurrent Use : For honest concurrent use to be a relevant factor under Section 5(2), there must be real and substantial concurrent use of the conflicting marks.

Summary

The opponents opposition was based on their ownership of registrations for the marks DINO EGGS and DINOSAURS for the same and similar goods to those of the applicant. They also filed details of extensive user of their mark DINOSAURS and some limited use of the mark DINO EGGS.

The applicant's mark had proceeded in the face of DINO EGGS on the basis of honest concurrent use but on closer inspection of this evidence there was in fact little use before the relevant date so it was not a significant factor for the Hearing Officer to consider.

Under Section 5(2)(b) it was common ground that identical goods were at issue so the only matter to be considered was a comparison of the respective marks DINO’S (stylised) and device and DINO EGGS. The Hearing Officer determined that the dominant element in the applicant’s mark was the word DINO’S and it was this element which he compared in detail with the opponents mark DINO EGGS. As he did not consider that the element EGGS was particularly distinctive for egg shaped products he had little difficulty in concluding that the respective marks were confusingly similar. This finding applied even where the marks were compared as wholes and bearing in mind that identical goods were involved the Hearing Officer decided that there was a likelihood of confusion within the meaning of Section 5(2)(b).

Under Section 5(4)(a) - Passing Off - the Hearing Officer accepted that the opponents had proved a reputation in the DINOSAURS mark but in use it was used with the house mark BERNARD MATTHEWS and other elements. The Hearing Officer considered that the mark DINO’s (stylised) and device was not confusingly similar to the mark DINOSAURS and this was clearly the case when compared to the context in which DINOSAURS was used. Opposition failed on this ground.

Full decision O/126/02 PDF document48Kb