Trade mark decision

BL Number
O/172/00
Decision date
16 May 2000
Hearing Officer
Mr M Reynolds
Mark
WARNER'S PRIVATE PLEASURES
Classes
03
Applicants
Warnaco Inc
Opponents
Origins Natural Resources, Inc
Opposition
Section 5(2)(b) and Section 5(4)(a)

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None

Summary

The applicants applied for their mark in June 1996 and the opponents said that they commenced to use their registered mark SECRET PLEASURES (Class 3) in October 1995. Turnover in the period to 1998 was said to be a modest £28,000. Also the evidence showed that the mark was used in the form ORIGINS SENSORY THERAPY SECRET PLEASURES. Under Section 5(4)(a) Passing Off - the Hearing Officer stated that the opponents had not substantiated their claim to goodwill in the mark SECRET PLEASURES at the material date and thus the opposition under this section failed at the outset.

Under Section 5(2)(b) the Hearing Officer referred to two other decisions which had been drawn to his attention. In the Paris Appeal Court the marks SECRET PLEASURES and PRIVATE PLEASURES had been held to be in conflict and a similar view had been taken by the OHIM Opposition Division. However, in this case the Hearing Officer noted that the conflict was between the marks SECRET PLEASURES and WARNER’S PRIVATE PLEASURES and the presence of the word WARNERS did make a difference. Taking an overall view of the conflict and bearing in mind the goods at issue - soaps, perfumes, essential oils etc - the Hearing Officer considered that while there was some conceptual similarity he did not think that in the final analysis there was a likelihood of confusion on the part of the public.

Full decision O/172/00 PDF document26Kb