Trade mark decision

BL Number
Decision date
13 June 2007
Appointed Person
Mr Richard Arnold QC
03, 14
Caroline Kavanagh
Emilio Pucci S.R.L.
Sections 5(2)(b), 5(3), 5(4)(a) & Section 56


Section 5(2)(b): Opposition failed. Appeal dismissed. Section 5(3): Opposition failed. Appeal dismissed.

Points Of Interest

  • See also Hearing Officer’s decision dated 11 September 2006 (BL O/256/06).


In his decision dated 11 September 2006 (BL O/256/06) the Hearing Officer decided that the opponent failed on all four grounds of its opposition. The opponent appealed to the Appointed Person in respect only of the grounds under Sections 5(2)(b) and 5(3).

On appeal the opponent submitted that (1) The Hearing Officer had not properly assessed the reputation of its mark. (2) Had misconstrued the applicant’s specifications. (3) Had not compared the respective marks properly. (4) Had not considered the matter of detriment properly in the light of the respective goods. (5) Had not considered the evidence as a whole and failed to take account of admissions made by the applicant. (6) The Hearing Officer was predisposed against the opponent’s case.

The Appointed Person reviewed the Hearing Officer’s decision in detail, taking account of the grounds of appeal. He concluded that the Hearing Officer had approached the conflict between the parties in the correct manner and had considered all the evidence that was before him and had taken all the relevant factors into account. Overall the Appointed Person concluded that the Hearing Officer was entitled to reach the decision he had made under Section 5(2)(b) that there was no likelihood of confusion. Appeal dismissed.

As regards the appeal under Section 5(3) the Appointed Person decided that in view of the decision under Section 5(2)(b) there was nothing in the opponent’s evidence or submissions which identified an independent basis for an objection under Section 5(3). Appeal dismissed.

Full decision O/168/07 PDF document54Kb