Trade mark decision

BL Number
Decision date
25 July 2006
Hearing Officer
Mr M Reynolds
03, 05, 16
May Exports Limited
John Paul Mitchell Systems
Sections 5(2)(b), 5(3), 5(4)(a) & Section 56(2)


Section 5(2)(b): Opposition partially successful. Section 5(3): Opposition partially successful. Section 5(4)(a): Opposition partially successful.

Points Of Interest

  • None


The opponent’s opposition was based on its ownership of a UK registration of the mark PAUL MITCHELL in Class 3 and a CTM registration of the same mark in Classes 3, 16 and 25. The opponent also filed evidence of use to show that it had an extensive reputation in relation to the supply of hair care products to professional hair salons; having 29.5% of that market.

The applicant also filed evidence of user from 1996 - some six years prior to application and claimed there had been no confusion. The Hearing Officer noted that the user was in a different area of trade as compared to the opponent but this difference was not reflected in the respective specifications and he had to consider the conflict in the light of those specifications.

Under Section 5(2)(b) the Hearing Officer noted as regards the applicant’s Class 3 application identical and similar goods were at issue; that some similar goods were included in the Class 5 application and that “goods made from these materials (paper and cardboard)” were similar goods in the Class 16 application. The Hearing Officer then went on to compare the respective marks bearing in mind the extensive reputation the opponent had in its mark. After consideration of the various tests the Hearing Officer considered the overall situation and how the public would react on encountering the applicant’s mark. Taking account of the opponent’s reputation the Hearing Officer concluded that consumers could well assume that identical and similar goods sold under the respective marks came from the same trade source or economically linked undertakings. Opposition thus succeeded in respect of such goods in Classes 3, 5 and 16.

A similar decision to that under Section 5(2)(b) was reached under Section 5(4)(a) but the Hearing Officer concluded that the opponent could not have greater success under Section 5(3) as compared to Section 5(2)(b), in respect of goods which were not similar.

Full decision O/208/06 PDF document103Kb