Trade mark decision

BL Number
Decision date
27 May 2003
Hearing Officer
Mrs S Long
09, 16
Registered Proprietor
NlightN Multimedia Ltd
Applicants for a Declaration of Invalidity
Terra Networks SA
Application for Invalidation
Section 47(2) (Section 5(2)(b); 5(3) & Section 5(4)(a)


Application for invalidation Section 47(2), citing Section 5(2)(b) dismissed.

Points Of Interest

  • 1. Visual selection of goods; low visual similarity in marks TERRA v TERRAPODS.


The application was based on a number of registrations of TERRA marks in the ownership of the applicants. The registered proprietors did not file a TM8 but sent a letter refuting the applicants’ allegations. The absence of a formal defence, however, did not displace the presumption of validity afforded by Section 72.

The Hearing Officer found some conceptual similarity in the marks but little visual or aural similarity. All the registered proprietors’ goods in Class 9 were identical or similar to some of the goods of the applicants’ specification; and some of the registered proprietors’ goods in Class 16 were identical with those falling within the applicants’ specification. However, taking account of the low visual similarity of the marks and the fact that the goods concerned would primarily be chosen visually, the Hearing Officer found no likelihood of confusion. The application for invalidation based on Section 5(2)(b) failed accordingly. The applicants had provided no evidence in support of the application under Sections 5(3) or 5(4)(a); the application was dismissed accordingly.

Full decision O/143/03 PDF document32Kb