Trade mark decision
- BL Number
- O/166/06
- Decision date
- 20 June 2006
- Hearing Officer
- Mr D Landau
- Mark
- Cobra
- Classes
- 37
- Applicant
- Cobra Directional Dialling Ltd
- Opponent
- Atlas Copco AB
- Opposition
- Sections 5(2)(b), 5(3) & 5(4)(a)
Result
Section 5(2)(b): Opposition successful. Specification restricted. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed.
Points Of Interest
- None.
Summary
The opponent owned a registration in Class 7 covering a range of goods including drilling machines and dating back to 1970. At the opposition stage it provided a statement saying that the mark had been used for a range of goods including drilling machines.
The opponent also owned a CTM application in Class 7 in respect of a range of goods including drilling machines and with an application date prior to that of the application in suit.
The applicant accepted the statement of use made by the opponent. However, it claimed there would be no confusion in respect of its drilling services in Class 37 since the applicant was using Cobra to designate a company whereas the opponent was using its mark on pieces of equipment.
The opponent also filed evidence of use but the evidence was unclear and not well focused. While the Hearing Officer accepted that there had been use of the opponent’s mark there was no certainty that there had been use within the UK or that the opponent had a reputation and goodwill in its mark in the UK. Thus the opposition must fail in the grounds under Sections 5(3) and 5(4)(a). Under Section 5(2)(b) the Hearing Officer noted that the applicant had accepted the opponent’s statement of use of its mark. He compared the respective marks and thought them to be very close. He then went on to compare the respective goods and services and concluded, on balance, that there was a likelihood of confusion in respect of drilling machines (goods) and drilling services. The Hearing Officer upheld the opposition in respect of drilling services and allowed the applicant one month to delete such services from its specification.
Full decision O/166/06 
63Kb
