Trade mark decision

BL Number

O/131/00

Decision date

10 April 2000

Hearing Officer

Mr G Salthouse

Mark

OSIS

Classes

03, 08, 09

Applicant

Umberto Giannini

Opponent

Oasis Stores Plc

Opposition

Sections 5(2)(b) & 5(4)(a) Section 56

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Section 56 - Claim dismissed

Points Of Interest

• None

Summary

Opposition based on opponent's numerous registrations of their trade mark OASIS, many of which were acknowledged to cover goods identical or similar to goods covered by the mark in suit in Classes 3, 16, 18, 21 and 25. In comparing the two marks, the Hearing officer concluded that there was no likelihood of confusion, whether phonetically or visually, between what on the one hand was a word with three distinct syllables and a familiar meaning and what on the other hand was a made-up word of two syllables and no obvious meaning, notwithstanding that the opponent's had established a reputation for clothing and jewellery at least, and that the relatively low value of most products in question meant that they were unlikely to be subject to close scrutiny. Opposition under Section 5(2)(b) therefore failed.

In the case of the opposition under Section 5(4)(a), whilst the Hearing Officer was persuaded that the opponent had established goodwill under the OASIS mark for goods in Classes 14, 18 and 25 he found no risk of trade source confusion, noting in particular that confusion though imperfect recollection was lessened where suppliers, such as the opponent, sold their goods mainly through their own stores or via well signposted concessionaires.

The opponent was found not to be entitled to a claim in respect of a well-known mark under Section 56 by virtue of the provisions of Section 55(1) which excludes the UK from the definition of a "Convention Country", the opponent apparently being based in the UK.

Full decision O/131/00 57Kb