Trade mark decision

BL Number

O/130/03

Decision date

9 May 2003

Hearing Officer

Mr M Reynolds

Mark

GUESS

Classes

12

Applicant

Michael James Poyzer & Susan Mary Poyzer t/a Supercycles

Opponent

Guess? Inc

Opposition

Sections 5(3) & 5(4)(a)

Result

Section 5(3) - Opposition failed.

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

Points Of Interest

• 1. None

Summary

The opponents’ opposition was based on their ownership of a number of registrations for the marks GUESS, GUESS?, and GUESS? within triangle device, in Class 25. They also claimed extensive use of these marks in relation to clothing and some use in relation to sunglasses and watches.

The applicants also filed evidence but it would appear that there was no use of their mark in relation to bicycles and accessories therefore, prior to the date of application.

Under Section 5(3) the Hearing Officer accepted that there had been fairly extensive use of the opponents’ marks in relation to articles of clothing (dissimilar goods to those of the applicants) but there was no evidence before the Hearing Officer as to the percentage of the market controlled by the opponents and advertising expenditure was modest. Overall the Hearing Officer concluded that the opponents’ marks did not have a significant reputation among the general population. The Hearing Officer went on to consider the effect of use by the applicants on the opponents mark. As their use was in relation to goods far removed from those of the opponents he did not consider that there would be dilution or damage to the opponents’ marks. Opposition failed on this ground.

Under Section 5(4)(a) – Passing Off – the Hearing Officer accepted that the opponents had a reputation in relation to the fashion end of the clothing business. However, this area was far removed from the bicycle trade of the applicants and the Hearing Officer did not believe that there would be any confusion or damage to the opponents’ trade marks. Opposition also failed on this ground.

Full decision O/130/03 211Kb