Trade mark decision

BL Number
Decision date
21 July 2008
Appointed Person
Ms Anna Carboni
09, 16, 41
Cube Publishing Ltd
Standard Life Insurance Company
Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in opposition proceedings


Appeal successful, the for the most part.

Points Of Interest

  • 1. Use of earlier marks; sub-set of goods/services; degree to which it can support a broader specification.
  • 2. Section 5(3); ‘link’ - ‘detriment’ - ‘unfair advantage’.


At first instance (see BL O/259/07) the Hearing Officer had found for the opponents under Sections 5(2)(b) and 5(3). The applicants appealed to the Appointed Person.

The appellants claimed inter alia that the Hearing Officer had erred in principle in his determination of the extent to which the earlier trade marks had been used and thus the scope of the specification to be taken into account under Section 6A of the Act. Also he had made a number of errors in his assessment of the extent of the reputation of the earlier marks and the finding of unfair advantage; Section 5(3). In addition he had made errors of principle in determining the case under Section 5(2)(b) and had not provided sufficiently detailed reasoning under that head.

The Appointed Person, having reviewed the Hearing Officer’s decision in relation to the extent of the use shown by the opponent’s, noted that he did not appear to have taken account of the guidance of the CFI on this issue (Case T-126/03 Reckitt Benckiser (Espana) SL v OHIM (ALADIN) [2006] ETMR 50) and he also appeared to have made an error in relation to the degree to which use in respect of a subset of services could support a broader set of (not precisely defined) services. The Appointed Person therefore examined the evidence afresh. This exercise resulted in a very substantial reduction in the specification to be attributed to the earlier marks.

Reviewing the decision on Section 5(3) the Appointed Person noted that the Hearing Officer had not mentioned two key decisions; moreover there was now a further decision, not issued at the date of the Hearing Officer’s decision, (L’Oreal SA v Bellini NV [2007] EWCA Civ 968, [2008] ETMR 1) All three had been included in the appeal and these would therefore have to be taken into account.

In the result the Appointed Person found the appeal successful on all grounds save in respect of a small deletion to be made in the Section 16 specification.

The original costs award was reversed and a further costs award made in respect of the Appeal.

Full decision O/208/08 PDF document143Kb