Trade mark decision

BL Number
O/196/06
Decision date
15 July 2006
Hearing Officer
Mr D Landau
Mark
HOTELSRUS
Classes
43
Applicant
Hotelrus Limited
Opponent
Geoffrey Inc
Opposition
Sections 5(3) & 5(4)(a)

Result

Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

  • None

Summary

The opponent based its opposition on its ownership of the registered mark TOYS’R’US (stylised) in Classes 28 (toys etc) and 35 (retail services). It also has an extensive reputation in relation to the sale of toys etc. The opponent also claimed that it more recently has run a travel club under its mark in the UK in association with Thomas Cook. In the event it was unable to provide much evidence in relation to this latter activity and the Hearing Officer was unable to accept that it had any significant reputation or goodwill in relation to its travel club activities at the relevant date.

The applicant also filed evidence about its adoption of the mark HOTELSRUS and freely admitted that it was aware of the TOYS R US and TILES R US marks when it coined its mark. It denied that there was any likelihood of confusion and indicated that no customer had asked about any association with TOYS R US.

Under Section 5(3) the Hearing Officer compared the respective marks and decided that there was some similarity but taking the respective goods and services into account he did not think that the applicant would gain advantage from the reputation of the opponents mark and he did not think that the opponent would suffer in any way.

Under Section 5(4)(a) the Hearing Officer concluded that the opponent had insufficient reputation in relation to its travel club activities to mount a realistic challenge. While it had a reputation in relation to the sale of toys etc this activity was some distance from the services of the applicant which related to reservation services for holiday accommodation etc. Opposition failed on this ground.

Full decision O/196/06 PDF document134Kb