Trade mark decision

BL Number: O/152/03
Decision date: 5 June 2003
Hearing Officer: Mr G Salthouse
Mark: SEGA LIGHT
Classes: 30
Registered Proprietor: Segafredo-Zanetti SPA
Applicant for Invalidity: Sega Corporation
Invalidity: Section 47(2)(a) based on Sections 5(2)(b) & 5(3)

Result

Sections 47(2)(a) & 5(2)(b) - Request for invalidity failed.

Sections 47(2)(a) & 5(3) - Request for invalidity failed.

Points Of Interest

1. None

Summary

The opponents request for invalidity was based on their ownership of a number of prior UK and Community Registrations for the marks SEGA, SEGA WORLD, SEGA (stylised) etc in a range of Classes and in particular registrations of SEGA and SEGA WORLD in Class 42 for café and restaurant services. They also claimed use of these latter marks in relation to amusement arcades and a theme park where it was said there were co-promotions with food and restaurant firms and the sale of such products as popcorn and lollies in association with their marks. Their main field of activities of course was the sale of computer and video games apparatus.

The Hearing Officer was unconvinced that the applicants’ evidence showed an enhanced reputation of their mark in relation to foodstuffs since such evidence was poorly documented and in most cases showed primary use of marks owned by other proprietors. He also noted that the SEGA WORLD theme park was opened only some ten weeks prior to the date of application of the proprietors’ mark, the relevant date.

Under Section 5(2)(b) the applicants relied on their registration in Class 42 but the Hearing Officer was not convinced, in the absence of relevant evidence, that the proprietors’ goods in Class 30, coffee, cocoa and chocolate beverages, were similar to the applicants, café and restaurant services. Thus while the respective marks were similar he considered that there was no likelihood of confusion. The request for invalidity failed on this ground.

Under Section 5(3) the Hearing Officer accepted that the opponents had a reputation in their SEGA marks but that such a reputation did not extend beyond the field of computer and electronic games. In particular he concluded that it did not have a significant reputation in its SEGA WORLD mark at the relevant date for theme parks and there was no evidence to show that use of the proprietors mark would cause detriment to the applicants’ mark. The applicants also failed on this ground.

Full decision O/152/03 83Kb