Trade mark decision

BL Number
O/137/02
Decision date
28 March 2002
Hearing Officer
Mr M Foley
Mark
BARCA
Classes
42
Applicant
Hale Leisure Ltd
Opponent
Futbol Club Barcelona
Opposition
Sections 3(3)(b); 5(2)(b); 5(3); 5(4)(a); 56(1)

Result

Section 3(3)(b): - Opposition failed

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

Section 5(3): - Opposition failed

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

Section 56(1): - Opposition failed

Points Of Interest

  • 1. Comparison of the services; entertainment v cafès, bars and restaurants.
  • 2. Survey evidence

Summary

The opponents were proprietors of the mark BARCA, a CTM registration in Class 41. Under Section 3(3)(b) the Hearing Officer ruled that that Section was intended to deal with absolute, not relative matters and in any case he could not accept, even if the public saw a connection with Barcelona, or Spain, they would be deceived into believing that the services originated there.

That ground was consequently dismissed.

Under Section 5(2)(b) he could not accept that the services were similar. Despite the similarity in the marks he found no likelihood of confusion. Under Section 56 he could not see that the opponents were in any better position than they were under Section 5(2)(b). That ground too was dismissed.

Under Section 5(3) he considered that whilst the marks were the same and the services different, there was no reason to believe that the applicants could derive any advantage, or that their use could be detrimental to the opponents’ mark.

Finally, under Section 5(4)(a) he could see no evidence of any trade in goods or services and he could not find that the opponents would suffer damage by the applicants’ user of their mark.

Full decision O/137/02 PDF document48Kb