Trade mark decision

BL Number
O/156/00
Decision date
2 May 2000
Hearing Officer
Dr W J Trott
Mark
WANNABE
Classes
03
Applicants
Scentura Creations Ltd
Opponents
Patrick Cox Designs Ltd
Opposition
Sections 5(2)(b), 5(3) and 5(4)(a)

Result

Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • "Relevant association" of goods - present circumstances distinguished from those in (a) The ETERNITY Trade Mark [1997] RPC 155, (b) Annabel's (Berkeley Square) Ltd v G Schock (t/a Annabel's Escort Agency) [1972] RPC 838 and (c) Lego Systems AS v Lego M Lemelstrich Ltd [1983] FSR 155.

Summary

Opposition based on Opponent's claim to substantial reputation in its unregistered mark WANNABE for shoes, clothing and bags, and on a third party's earlier registration of that mark in Class 25. Under Section 5(4)(a), the Hearing Officer found on the evidence that the Opponent did indeed have a reputation for shoes, thought not under WANNABE per se but only under the mark PATRICK COX WANNABE, the designer's name and WANNABE being found to stand together, albeit with the latter forming at least as strong an element of the mark as the designer's name. However, the Hearing Officer was not persuaded that there was a "relevant association" between the respective fields of activity of the two parties, particularly since the Opponent's reputation did not extend to perfumes, fragrances and toiletries, and there was thus no risk of misrepresentation. Opposition under Section 5(4)(a) therefore failed.

Under Section 5(2)(b), although the mark in suit was virtually identical to the cited third party mark, there was no similarity of goods, and thus no likelihood of confusion.

Under Section 5(3), the Hearing Officer observed that the owners of the earlier registered mark were not a party to the opposition and had made no claim to a UK reputation, and the Opponent's own mark, being unregistered, did not fall within the scope of Section 5(3), though in any event he could not conceive of harm to the Opponent's reputation.

Full decision O/156/00 PDF document39Kb