Trade mark decision

BL Number

O/128/04

Decision date

12 May 2004

Hearing Officer

Mr D Landau

Mark

DOCUCENTRE

Classes

16, 35, 38, 39, 41

Applicant

Electronic Document Services Limited

Opponent

Xerox Corporation

Opposition

Section 5(2)(a)

Result

Section 5(2)(a) - Opposition partially successful.

Points Of Interest

• 1. None

Summary

The opponents opposition was essentially based on their ownership of the marks DOCUCENTRE, DocuCentre and DOCUCENTER (a series of three) registered in Class 9 in respect of a range of copying and reproducing apparatus, computers, telecommunications apparatus and associated equipment for use with such goods.

At the outset to his decision the Hearing Officer identified a document from the opponents which should have been classified as confidential. He issued an appropriate order.

Both parties filed evidence but it related mainly to searches carried out on the internet and was of little assistance to the Hearing Officer. The opponents also gave details of use of the mark after the relevant date but in his consideration of the conflict the Hearing Office had to take into account the whole of their specifications. As the opponents had not denied that the respective marks were identical the Hearing Officer proceeded on the basis that they were identical.

Under Section 5(2)(a) the Hearing Officer compared the respective sets of goods and services with reference to the usual tests for judging similarity. In the event he found that some of the applicants’ goods in Class 16 and some of their services in Classes 35 and 38 were similar to the opponents’ goods. As the marks were identical he considered there was a likelihood of confusion and he indicated to the applicants that their application could only proceed if they restricted their specifications as set down in his decision.

As the applicants had been for the most part successful he awarded them a reduced figure by way of costs.

Full decision O/128/04 56Kb