Trade mark decision

BL Number
Decision date
27 October 1998
Hearing Officer
Mr G Salthouse
03, 09, 18, 25
G.T.R. Group S.p.A.
Jean Patou
Sections 5(2)(b), 5(3) & 5(4)(a)


Section 5(2)(b) - Opposition failed

Section 5(3) - Not pursued

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None


The opponents opposition was based on ownership and use of their mark JOY in relation to, primarily, perfumes (Class 3). The mark is well known.

Under Section 5(2)(b) the Hearing Officer noted that in Class 3 identical goods were at issue and went on to compare the respective marks JOY and JOIS & JO (stylised). There was no evidence before the Hearing Officer as to how the applicants mark would be pronounced. He thought it more likely to be JO-ISS or JOYCE rather than JOYS and therefore found that the marks were not phonetically similar enough to give rise to confusion. Also as the marks were different visually and conceptually - JOY is a well known word - the Hearing Officer concluded that there was no likelihood of confusion between the two marks.

With regard to Section 5(4)(a) - Passing Off - The Hearing Officer accepted that the opponents had a reputation in their mark but they had failed to show that use of the applicants mark would cause deception or confusion. In view of the type of goods involved and the differences in the respective marks the Hearing Officer found that the opponents failed on this ground.

Full decision O/211/98 PDF document29Kb