Trade mark decision

BL Number
O/160/03
Decision date
16 June 2003
Hearing Officer
Mr A James
Mark
QUARTZ
Classes
09
Applicant
Apple Computer Inc
Opponent
TKS-Teknosoft SA
Opposition
Sections 5(1) & 5(2)(a)

Result

Section 5(1) - Opposition failed.

Section 5(2) - Opposition successful

Points Of Interest

  • 1. The applicants appealed to the Appointed Person. In her decision dated 17 March 2004 (BL O/090/04) the Appointed Person upheld the Hearing Officer’s decision.

Summary

The opponent’s opposition was based essentially on their ownership of a Community Registration for the mark QUARTZ (stylised) in Classes 9, and 42 in respect of computer programmes for use in banking and a range of computer programming and software development services. The applicant’s goods were “a feature of computer software for use in windowing and graphic applications; but not including any such goods for use in banking.

Under Section 5(1) the Hearing Officer considered whether the respective marks were identical, in view of the slight stylisation of the opponent’s mark. He concluded that the marks were so visually similar that any differences would be overlooked by the average consumer and therefore they must be considered identical. In any event if not identical the respective marks were very closely similar.

The Hearing Officer then went on to compare the specialised goods of the respective parties in some detail. He concluded that as the uses were different the respective goods were not identical. However, as both sets of goods were of the same nature, computer software, and that there could be overlap as regards users such as software developers and business and personal users, the Hearing Officer considered the respective goods to be similar. He arrived at a similar finding as regards the opponents services in Class 42.

In considering the overall situation and taking account of the fact that QUARTZ was a distinctive mark for the goods and services at issue, the Hearing Officer decided that there was insufficient clear water between the respective marks and that there was a likelihood of confusion. Opposition thus succeeded.

Full decision O/160/03 PDF document55Kb