Trade mark decision

BL Number

O/168/04

Decision date

10 June 2004

Hearing Officer

Mr D Landau

Mark

ESSENCE

Classes

21

Applicant

Elia International Limited

Opponent

Koninklijke Philips Electronics NV

Opposition

Sections 3(1)(a), 3(6), 5(1), 5(2)(b) & 5(4)(a)

Result

Section 3(1)(a) - Opposition failed

Section 3(6) - Opposition failed

Section 5(1) - Opposition failed

Section 5(2)(b) - Opposition partially successful

Section 5(4)(a) - Not decided

Points Of Interest

• 1. The opponent complained about the examination of the mark in suit but the Hearing Officer decided that that was not a matter to be considered in his decision.
• 2. The opponent filed samples of its goods but did not submit them formally as exhibits. Not considered by Hearing Officer.

Summary

The opponent Philips owns registrations in Classes 7 and 11 for the mark ESSENCE and it claimed that the applicant's goods were similar to its goods. Philips also claimed use of its mark in relation to a range of electrical and kitchen utensils which it claimed extended into Classes 7, 9, 11 and 21. Turnover figures for the years 1999 to 2001 ranged from £440k to £898k and advertising costs during this period totalled some £223k.

Under Section 3(1)(a) the Hearing Officer decided that this ground had been confused with a claim to ownership of the mark in suit under Section 5 and that it had no merit. Opposition dismissed

Under Section 3(6) – bad faith – the opponent complained about the vague wording and breadth of the applicant’s specification but filed no evidence to support this ground. Opposition dismissed.

The ground under Section 5(1) was dismissed because, as the respective goods were in different Classes, they could not be identical.

The essential ground of opposition was under Section 5(2)(b) and as the respective marks were identical the Hearing Officer carefully compared the list of goods in the respective specifications. He considered that the applicant’s specification contained a number of goods which were similar to the opponent’s goods and that the application could only proceed if such goods were excluded. A period of time was allowed for the applicant to request the necessary restriction.

Under Section 5(4)(a) the Hearing Officer decided that the opponent was in no better position under this ground as compared to Section 5(2)(b). No formal decision made.

Full decision O/168/04 75Kb