Trade mark decision

BL Number
Decision date
8 May 2002
Hearing Officer
Dr W J Trott
David Flatman Limited
World Books Incorporated
Sections 5(2)(b), 5(3) & 5(4)(a)


Section 5(2)(b) - Opposition failed.

Sections 5(3) - Opposition failed.

Sections 5(4)(a) - Opposition failed.

Points Of Interest

  • 1. In comparing the respective marks under Section 5(2)(b) the Hearing Officer noted the descriptive nature of the opponents mark and stated that a mark of limited distinctiveness can only enjoy a limited scope of exclusivity.


The opponents opposition was based on their ownership of registrations in Classes 9 and 16 for the mark WORLD BOOK in respect of the same and similar goods as those of the applicants. They also filed evidence of use but as the turnover figures also related to sales in Ireland and other EU countries the Hearing Officer had some difficulty in establishing what reputation the opponents had in their mark in the UK. From the totality of the evidence he concluded, however, that the opponents had a reputation for educational publications in CD-ROM format and some reputation for written encyclopaedias and other educational material.

The applicants also claimed use of their mark but the Hearing Officer decided that it was not relevant in the context of these opposition proceedings.

In his consideration under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks BOOKWORLD (stylised) and device with WORLD BOOK. In his comparison he concluded that the opponents did not have an enhanced reputation in their mark and decided that the marks must be compared on a prima facie basis. The Hearing Officer found that visually the two marks were somewhat different; also one consists of a single word and the other of two words. Aurally they were also different and this difference was emphasised by a conceptual difference in the two marks. Thus the opponents mark alluded to a book about the world whereas the applicants mark alluded to a world of books. In totality the Hearing Officer concluded that respective marks were not confusingly similar and that the opponents failed in this ground of opposition.

The opponents also failed in their grounds under Sections 5(3) and 5(4)(a) - Passing Off - because of the lack of a proved significant reputation; insufficient focussed evidence regarding their reputation (if any) with the general public; the specialised nature of the goods on which their mark was used and the descriptive nature of their mark.

Full decision O/194/02 PDF document58Kb