Trade mark decision

BL Number

O/222/08

Decision date

5 August 2008

Hearing Officer

Mrs J Pike

Mark

Lash Xpert

Classes

03, 35

Applicant

Iain Lamont

Opponent

Proctor & Gamble Company

Opposition

Sections 5(2)(b) & 5(4)(a)

Result

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

Points Of Interest

• None

Summary

The opponent’s opposition under Section 5(2)(b) was based on its ownership of the marks MAX FACTOR THE MAKER OF MAKE UP ARTISTS (with the X prominent) and PERT in respect of the same and similar goods as those of the applicant. The opponent claimed to have used its MAX FACTOR mark (which incorporates a highly stylised X element) and to have a reputation and goodwill in respect of the ‘X’ element sufficient to support a ground of objection under Section 5(4)(a) - Passing Off.

The opponent also filed details of use of its MAX FACTOR mark but this only commenced in February 2004. Sales were extensive during the period to November 2006, amounting to some £245M but the evidence showed different uses of the ‘X’ element and some exhibits were dated after the relevant date. Results of a survey were provided but these were dismissed by the Hearing Officer because it was not conducted or reported in a way which satisfies the requirements for conducting surveys as set down in the Imperial Group v Philip Morris Case [1984] RPC 293

Under Section 5(2)(b) the Hearing Officer compared the respective marks MAX FACTOR (X prominent) and LASH XPERT (X prominent). While the Hearing Officer accepted that the letter ‘X’ would be noted in the respective marks he considered this the only point of visual similarity. There was no aural similarity and the marks were different conceptually. They were thus not similar. In relation to the marks PERT and LASH XPERT (X prominent) the Hearing Officer accepted that the whole of the opponent’s mark was contained within the applicant’s mark. However, in context the applicant’s mark would be seen as LASH EXPERT so there was no visual, aural or conceptual similarity. Thus the respective marks were not similar. Overall the opponent’s ground under Section 5(2)(b) failed.

The ground under Section 5(4)(a) also failed because the Hearing Officer was not satisfied that the opponent had shown that it had a reputation in an ‘X’ mark as claimed. Thus this ground failed at the outset.

Full decision O/222/08 150Kb