Trade mark decision

BL Number: O/141/05
Decision date: 11 May 2005
Appointed Person: Professor Ruth Annand
Mark: KO BOXER
Classes: 25
Applicant: C F Collections Limited
Opponent: Joe Boxer Company LLC
Opposition: Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b): - Appeal allowed. Opposition successful.

Section 5(4)(a): - Not considered.

Points Of Interest

1. See also Hearing Officer’s decision dated 3 September 2004 (BL O/272/04).

Summary

In his decision dated 3 September 2004 (BL O/272/04) the Hearing Officer had decided that the respective marks KO BOXER and JOE BOXER were not confusingly similar and that opposition failed under Sections 5(2)(b) and 5(4)(a).

On appeal the opponent argued that the Hearing Officer had not properly identified the average consumer as the public at large. A large section of the public, particularly female, would not recognise the boxing term KO as meaning “knock out” nor would they recognise the term in conceptual terms in distinguishing between the two marks. For example both KO BOXER and JOE BOXER might be recognised as names of people. Also the Hearing Officer did not give sufficient weight to the fact that identical goods were at issue and that the opponent’s mark had a reputation in the marketplace.

In his decision the Hearing Officer had only compared the respective marks KO BOXER and JOE BOXER and had effectively decided that an allusion to boxing was a significant fact in reaching his decision that the respective marks were not similar. However, if the Hearing Officer took this view the opponent submitted that he should also have considered another of the opponent’s marks which consisted of the words JOE BOXER and a device of a boxer.

Finally the opponent submitted that the decision under Section 5(4)(a) should have been considered in greater detail, the decision under Section 5(2)(b) did not adequately decide the matter under Section 5(4)(a) as it was clear that the opponent had a goodwill and reputation in its mark.

Under Section 5(2)(b) the Appointed Person considered that there was justification in some of the opponent’s criticisms although she also noted that the opponent’s evidence was poorly focused and not particularly helpful in deciding the strength of the opponent’s reputation in its marks. However, the Hearing Officer had not clearly identified the average consumer and had not made clear that identical goods were at issue.

In comparing the respective marks the Appointed Person accepted that the opponent’s marks might not have a high distinctive character, particularly in relation to boxer shorts. Nevertheless the respective marks were quite close aurally if pronounced CO BOXER, (KO BOXER) and JOE BOXER and both contained the word BOXER. Conceptually, therefore the respective marks KO BOXER and JOE BOXER were very similar either in relation to “boxer shorts”, boxing or as a name. Additionally, the Hearing Officer had not considered the possibility that there might be indirect confusion in that the public might believe that KO BOXER products constituted a new or another line in the JOE BOXER range of underwear. The Appointed Person went on to conclude that the opponent succeeded in this ground of its opposition.

In view of her decision under Section 5(2)(b) the Appointed Person saw no need to consider the appeal in relation to Section 5(4)(a).

Full decision O/141/05 69Kb