Trade mark decision

BL Number: O/172/04
Decision date: 14 June 2004
Hearing Officer: Mr J MacGillivray
Mark: DUO
Classes: 03, 05
Applicant: Kiwi Europe Holdings BV
Opponent: Reckitt Benckiser (UK) Ltd
Opposition: Sections 3(1)(b), (c) & (d) & 5(2)(b)

Result

Section 3(1)(b), (c) & (d) - Opposition failed

Section 5(2)(b) - Opposition successful (Class 3) Opposition failed (Class 5)

Points Of Interest

1. See also BL O/173/04
2. If the date of revocation is not prior to the date of application, then the opponent has existing rights at the date of application (Section 46(6)).

Summary

The objection under Section 3 was based on a claim by the opponent that DUO is a combining form meaning ‘two’ and thus descriptive in relation to the goods at issue and under Section 5 on the ownership of the registered mark BLEACHMATIC DUO in Class 3 in respect of identical and similar goods.

The applicant applied for the mark in suit on 17 January 2002 and applied to revoke the opponent’s registration on 14 August 2003. Revocation was granted with effect from that date. However, taking account of the provisions of Section 46(6) the opponent submitted that it had rights in its mark when the mark in suit was applied for on 17 January 2002.

Under Section 3 the Hearing Officer accepted that DUO is a combining form meaning ‘two’ but was not convinced that the average consumer would see it as a descriptive term or that it was a natural alternative to the words ‘twice’ or ‘double’. Thus it was not a term which should be kept freely available for all. The Hearing Officer went on to conclude that the grounds under Section 3(1)(b) and (c) could not be sustained and, as the opponent had filed no evidence to support its claim under Section 3(1)(d) , that ground also fell away.

Under Section 5(2)(b) the Hearing Officer compared the respective sets of goods and concluded that in Class 3 the respective goods were identical and similar. He also decided that the applicant’s Class 5 goods were not similar to the opponent’s Class 3 goods.

As regards the respective marks DUO and BLEACHMATIC DUO the Hearing Officer was of the view that BLEACHMATIC was likely to be seen as a house mark and this being the case the respective marks shared visual, aural and conceptual similarities. Overall he decided that the respective marks were confusingly similar. The opponent was therefore successful in its opposition under Section 5(2)(b) in respect of the Class 3 application of the applicant but failed in respect of the Class 5 application.

Full decision O/172/04 48Kb