Trade mark decision

BL Number
Decision date
24 April 2001
Hearing Officer
Mr M Reynolds
Janchem Direct Limited
Deb Limited
Sections 3(1)(b), 3(1)(c), 3(1)(d), 5(2)(b) & 5(4)(a)


Section 3(1) - Opposition failed

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest


Opposition based on opponent’s UK and Community registrations of the mark Deb in Class 3 and DEB in Classes 3, 5, and 21.

Commenting that the Section 3 grounds were not pursued with any great vigour at the hearing, though not actually abandoned by the opponent, the Hearing Officer proceeded firstly to dismiss those grounds. In his view, although the mark in suit was something of a colloquialism it had no particular or obvious application in describing the attributes or characteristics of goods (as opposed to persons or perhaps animate objects). Moreover, although in the context of the goods at issue (which could include hand creams) it might be said to be cleverly allusive, it was some way from being open to objection under Section 3(1).

The main ground of opposition was under Section 5(2)(b), and in deciding that issue the Hearing Officer accepted that the respective marks covered identical goods and that the opponent had a significant reputation under its inherently distinctive marks. However, in applying the usual tests he concluded that the respective marks were easily distinguishable on a straightforward comparison. Moreover, although oral use in relation to certain specified goods (notably hand care products) could reduce the distance between the marks, there was no real likelihood of confusion, particularly in the light of the opponent’s use of sub-brands or descriptors which played a part in product ordering and reduced the risk of "read-through" from the marks to the name of the goods.

Opposition under Section 5(2)(b) therefore failed, and the Hearing Officer found, briefly, that the opponent was in no better position under Section 5(4)(a).

Full decision O/192/01 PDF document43Kb