Trade mark decision
- BL Number
- O/164/08
- Decision date
- 16 June 2008
- Hearing Officer
- Mr O Morris
- Mark
- FILM IDOL film idol
- Classes
- 09, 16, 18, 21, 24, 25, 28, 35, 38, 41
- Applicant
- Film Idol Limited
- Opponent
- Freemantle Media Operations BV
- Opposition
- Sections 3(1)(a), (b), (c) & (d), 3(3)(b), 5(2)(b), 5(3), 5(4)(a) & 56
Result
Sections 3(1)(a), (b), (c) & (d): Opposition failed in relation to specified goods. Section 3(3)(b): Opposition failed in relation to specified goods. Section 5(2)(b): Opposition partially successful. Section 5(3): Opposition failed in relation to specified goods. Section 5(4)(a): Opposition partially successful.
Points Of Interest
- The applicant filed no evidence and did not respond to correspondence in the latter stages of the proceedings.
Summary
The opponent owns registrations for the marks POP IDOL, POP IDOL & device and IDOLS in a range of Classes including Classes 9, 16, 25, 28, 35, 38 and 41. It also filed evidence to show that at the relevant date, the date of application for the mark in suit, it had a significant reputation and goodwill in its mark in relation to a television programme called POP IDOL.
Under Section 5(4)(a) the Hearing Officer noted the reputation of the opponent’s mark and considered that the public could well assume a connection between POP IDOL and FILM IDOL in relation to television entertainment services. The Hearing Officer went on to consider the conflict in relation to a range of goods and services in Classes 9, 16, 38 and 41 and with some exceptions (clarified below) that the opponent was successful on this ground because of the likelihood of misrepresentation and damage.
Under Section 5(2)(b) the Hearing Officer compared the respective marks in relation to the remaining goods and services in the applicant’s application. As regards the respective marks the Hearing Officer considered POP IDOL and FILM IDOL to be reasonable similar and IDOLS and FILM IDOL to have some similarity. Making a careful comparison of the respective goods and services the Hearing Officer concluded that, with the exception of some goods in Class 18 and goods in Classes 31 and 24, the goods and services were identical or very similar. Overall the Hearing Officer considered the likelihood of confusion to be high and that opposition succeeded against a range of specified goods and services.
The Hearing Officer went on to consider the other grounds in respect of some Class 18 goods and goods in Classes 21 and 24 but concluded that the opposition failed under Section 5(3) and that the ground under Section 56 was not relevant. As regards the ground under Section 3 the Hearing Officer considered that the mark in suit was merely suggestive, in a descriptions sense, and therefore the mark was capable of distinguishing. Opposition failed on this ground.
The remaining ground under Section 3(3)(b) was also dismissed by the Hearing Office who considered that the mark in suit made no real promise to consumers and consequently no real deception would occur in relation to goods which were likely to be examined by consumers before purchase.
Full decision O/164/08 
223Kb
