Trade mark decision

BL Number
O/212/08
Decision date
23 July 2008
Hearing Officer
Mr G Salthouse
Mark
HY-BOND RESIGLASS
Classes
05, 10
Applicant
Shofu, Inc
Opponent
Heraeus Kulzer GmbH
Opposition
Sections 5(2)(b), 5(3) & 5(4)(a)

Result

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

Points Of Interest

  • None

Summary

The opponent’s opposition was based on its ownership of the mark iBond registered in class 5 in respect of a range of products for dental purposes. These goods are identical and similar to the applicant’s goods. The opponent also filed details of use of its mark in respect of a self-etching bonding system for use in dentistry. This product is obviously specialised and turnover figures for the years 2003-2006 are modest. However, the product appears to have a significant market share and the Hearing Officer accepted that the opponent had a reputation and goodwill in its mark. He did not accept, however, that the reputation was such that the mark iBond deserved enhanced protection.

Under Section 5(2)(b) the Hearing Officer proceeded on the basis that identical goods were at issue when comparing the respective marks. The word BOND appears as the common element in the two marks but as this word is descriptive for the goods at issue the Hearing Officer considered the opponent’s mark to have a low level of distinctiveness. The Hearing Officer went on to find that the significant differences in the two marks meant that they were not similar and that confusion was not likely even in respect of identical goods. The ground under Section 5(2)(b) failed.

The lack of similarity between the two marks meant that the grounds under Sections 5(3) and 5(4)(a) also failed. In the case of the Section 5(3) ground the Hearing officer concluded that the opponent had insufficient reputation in its mark to mount and sustain this ground.

Full decision O/212/08 PDF document47Kb