Trade mark decision

BL Number
O/197/06
Decision date
7 July 2006
Appointed Person
Mr Geoffrey Hobbs QC
Mark
CITIBOND
Classes
36
Applicant
Citybond Holdings PLC
Opponent
Citibank NA & Citicorp
Opposition
Sections 3(1)(b) & (c), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): Appeal allowed in respect of certain services Section 5(3): Appeal allowed in respect of certain services Section 5(4)(a): Appeal allowed in respect of certain services

Points Of Interest

  • As described.

Summary

This was an appeal from the Hearing Officer’s decision dated 18 May 2006 (BL O/136/05) in which he found that the opposition failed on all grounds. The appeal related only to the Section 5 grounds.

The applicant had a prior right in respect of travel insurance services and travel bonding but its specification also included the terms “Insurance services, insurance brokerage and insurance consultancy”. After the hearing before the Appointed Person, discussions about a possible settlement took place on the basis that the applicant would restrict its specification to its main area of interest but the parties could not agree on acceptable wording. Subsequently, the applicant asked the Appointed Person to allow it to restrict its specification if he was minded to allow the appeal in respect of part of its specification.

In his decision the Appointed Person reviewed in detail his powers to agree a restricted specification on appeal and concluded that it he was so minded, the application would have to be remitted to the Registrar for the actual process to be carried out.

With regard to the appeal the Appointed Person reviewed the Hearing Officer’s decision and the evidence that was before him. With regard to the respective marks the Appointed Person noted the areas of similarity referred to by the Hearing Officer and concluded that he had erred in deciding that the respective marks were not similar overall; particularly in view of the opponent’s reputation in its CITIBANK mark and its family of CITI marks. Overall, under Section 5(2)(b) the Appointed Person concluded that if the opponent commenced to use its mark in relation to services which strayed into the opponent’s banking and related activities, confusion could well arise. Therefore, the terms “Insurance services insurance brokerage and insurance consultancy” must be removed from the applicant’s application.

In view of the finding of similarity under Section 5(2)(b) the opponent succeeded on the same basis under Sections 5(3) and 5(4)(a).

Full decision O/197/06 PDF document157Kb