Trade mark decision

BL Number
O/158/98
Decision date
31 July 1998
Hearing Officer
Mr P Lawrence
Mark
VISA
Classes
10
Applicant
C A Sheimer (M) Sdn Bhd
Opponent
Visa International Service Association
Opposition
Sections 3(6), 5(3) & 5(4)

Result

Section 3(6) - Opposition failed.

Section 5(3) - Opposition successful.

Section 5(4)(a) & (b) - Opposition failed.

Points Of Interest

  • 1. This decision was appealed to the Appointed Person. See [2000] RPC 484.
  • 2. The opponents had also raised opposition grounds under Sections 10(3) and 11(1) but the Hearing Officer decided that the issues raised under these sections were dealt with in relation to the Section 5(3) ground.

Summary

The applicants had an earlier registration for the mark VISA in Class 10 but on 15 February 1995 the current opponents had applied for revocation on the grounds of non-use. This application was filed on 27 February 1995 and subsequently the registered proprietors surrendered the earlier registration.

The opponents owned a registration for the mark VISA in Class 36 in respect of credit card and financial services and filed evidence to show the extent of their massive reputation. They also filed declarations from three pharmacists who stated that if they saw the mark VISA used in relation to condoms they would assume some association with the opponents.

The applicants claimed to have adopted their VISA mark in 1980 and to have used it in relation to condoms and prophylactics in Malaysia and the far east for a number of years. Efforts had been made to find a distributor in the UK and eventually a Mr Zarecky had been appointed and sales had been made in the UK through Mr Zarecky. However, the opponents filed evidence to the effect that Mr Zarecky was not aware of the applicants and Mr Zarecky also attended the hearing before the Registrar where he was cross-examined on his evidence.

Under Section 5(3) the Hearing Officer noted that the respective marks were identical and that the respective goods and services were dissimilar. He also noted the opponents significant reputation in their VISA mark and the fact that its use in relation to credit cards would be widespread and used in relation to a wide range of goods and services. In the light of the evidence before him the Hearing Officer decided that the public would be likely to assume a connection with the opponents if the applicants used the mark in suit; also that such use would have a detrimental effect on the distinctive character of the opponents mark. Opposition succeeded on this ground.

With regard to the ground under Section 5(4)(a) - Passing Off - the Hearing Officer decided that even though the public might initially assume a connection with the opponents if the applicants used their mark, he did not think that they would ultimately be deceived. Opposition failed on this ground. Objection under Section 5(4)(b) also failed because the applicants had applied for their VISA mark in block capitals.

Under Section 3(6) the evidence of use filed in relation to the earlier registered mark was considered but the Hearing Officer decided that there was insufficient evidence before him to establish that the opponents deliberately set out to exploit the reputation the opponents had in their mark. Opposition failed on this ground.

Full decision O/158/98 PDF document50Kb