Trade mark decision

BL Number: O/197/99
Decision date: 12 July 1999
Hearing Officer: Mr G Salthouse
Mark: THE B-SAFE PROGRAME & DEVICE
Classes: 35
Applicant: Mark Dominic Cooper
Opponent: Aubrey Daniels & Assoiciates Inc
Opposition: Sections 1(1), 3(1)(a), 3(1)(b), 5(2)(b), 5(4) Sections 7 & 56

Result

Section 1(1) - Opposition failed

Section 3(1)(a) - Opposition failed

Section 3(1)(b) - Opposition failed

Section 5(2)b - Opposition failed

Section 5(4) - Opposition failed

Section 7 - Opposition failed

Section 56 - Opposition failed

Points Of Interest

Disclaimers - The applicant having declined to agree to a disclaimer of the words "THE B-SAFE PROGRAMME" in the mark in suit, the Hearing Officer observed that he had no power to impose a disclaimer as a condition of registration, even if minded to do so.

Summary

Opposition based on the opponent’s registration in the USA of the mark B-SAFE in respect of behavioural based consultative and safety processes, and the use under licence in the UK of the mark, which the opponent claimed to be entitled to protection under the Paris Convention as a well known mark. In dealing briefly with the opposition under Sections 1(1) and 3(1), the Hearing Officer found no evidence as to why the mark in suit could not function as a trade mark, and in his view the mark was clearly fanciful and distinctive in character, and opposition on these grounds therefore failed.

In regard to opposition under Section 5(4), the Hearing Officer concluded that the opponent had failed to establish that either its own (international) transactions or those of its UK licensee had generated goodwill under its mark B-SAFE among UK customers. He further found insufficient evidence that use of the mark in suit at the relevant date would have led to confusion and deception amongst a substantial number of persons, and it followed that there would be no damage to the opponent. Opposition on that ground therefore failed.

The Hearing Officer accordingly further concluded briefly that he could find no basis for the opponent’s claim to protection under the Convention, or for opposition based on Section 5(2)(b) or the concurrent use provisions of Section 7.

Full decision O/197/99 65Kb