Trade mark decision

BL Number
Decision date
6 July 1998
Hearing Officer
Mr A James
Audio Medical Devices Ltd
Audi AG
Section 5(3)


Section 5(3) - Opposition failed.

Points Of Interest

  • A useful summary of the consideration relevant to an opposition under Section 5(3).


The opponents opposition was based on their ownership of the mark AUDI in respect of motor vehicles and their repair and a significant reputation in their mark gained over a long period of time. They are the owners of the only AUDI marks on the UK Register or of marks having a separate AUDI integer. The company have a reputation for quality goods.

The applicants goods are hearing aids and associated products. They claimed that in relation to their goods AUDI is semi descriptive as it means “to hear” and MED is short for medical. They also said they had used the mark (or their Company name - also AUDI-MED) for a number of years and no confusion had arisen but as this claim was not confirmed in their evidence the Hearing Officer took no account of it in his decision.

Under Section 5(3) the opponents stated that as they had proved a reputation in their mark there was an onus on the applicants to show that registration of their mark was not contrary to the provision. The Hearing Officer rejected this approach and said it was up to the opponents to show that there was a likelihood of confusion. As they had filed no such evidence in this case they could not succeed on the issue of confusion.

The second leg of the opponents’ case was that registration and use of the applicants mark would result in the dilution and be detrimental to the distinctive character of the opponents’ mark. In applying this test the Hearing Officer compared the respective marks; the distinctiveness of the opponents AUDI mark; its reputation in relation to its goods and services; its uniqueness in the marketplace.

The Hearing Officer decided that there were differences in the respective marks; that the applicants mark was semi descriptive; that the respective goods were very different and that the opponents reputation was in relation to a specific range of goods, namely motor vehicles. In all the circumstances he did not believe that the applicants mark would dilute the reputation of the opponents mark or take unfair advantage of its reputation. Opposition thus failed.

Full decision O/140/98 PDF document82Kb