Trade mark decision

BL Number
Decision date
3 April 2002
Hearing Officer
Mr A James
Vivat Holdings Limited
Levi Strauss & Co
Sections 5(2)(b) & 5(4)(a)


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

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

Points Of Interest

  • 1. Costs: At the conclusion of the hearing the Hearing Officer reserved his position re an award of costs and asked the parties to make submissions. The opponents had submitted survey evidence but had failed to disclose that it was part of an "omnibus" survey which featured five other surveys on behalf of the opponents. The Hearing Officer stated that if he had decided that disclosure was deliberately withheld he would have awarded full costs. However, in all the circumstance he awarded an additional £500 to the applicants. Cases referred to : Rizla Limited’s Application [1993] RPC 365 and Anheuser-Busch Inc [2001] All ER(D) 08 (Dec).


The opponents opposition was based on their ownership of the registration of two stitch marks in Class 25 in respect of the same and similar goods to those of the applicants. The opponents filed extensive use of their mark and the Hearing Officer accepted that their stitch mark (described as arcurate mark) was distinctive to a significant proportion of the public, albeit as a secondary mark. The opponents also filed survey evidence but this was not obtained in the correct manner nor was it sufficiently detailed to provide any significant assistance.

The applicants also filed evidence of use of their mark but it had been used in combination with other marks and no evidence was filed to show that it was recognised as indicating origin in its own right.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue - the main items of interest being jeans, trousers and slacks. The Hearing Officer compared the respective marks and found that, overall, they were somewhat similar but that there were differences which were apparent from first impressions of the respective marks.

In his consideration about the possibility of confusion the Hearing Officer accepted that the evidence filed by the parties showed that stitch marks were common to the trade in jeans, at the relevant date. Taking all the relevant factors into account, including the reputation of the earlier mark., the Hearing Officer did not rule out the possibility that use of the applicants mark would not bring to mind the opponents mark but he concluded that the respective marks were sufficiently different for confusion not to arise. Opposition failed on this ground.

The Section 5(4)(a) - Passing Off - ground also failed. The opponents case was less strong because in use their mark was used with other marks and, in any event, the Hearing Officer had found the respective marks not to be confusingly similar.

Full decision O/154/02 PDF document120Kb