Trade mark decision

BL Number
O/230/02
Decision date
5 June 2002
Hearing Officer
Mr D Landau
Mark
SUNNY CITIES
Classes
09, 35, 36, 42
Applicant for Invalidty
Sun Microsystems Inc
Registered Proprietor
Sunny Cities
Invalidity
Section 47 based on Sections 3(6), 5(2)(b) & 5(4)(a)

Result

Section 47 & 3(6) - Invalidity action failed

Section 47 & 5(2)(b) - Invalidity action failed

Section 47 & 5(4)(a) - Invalidity action failed

Points Of Interest

  • The applicant for invalidity claimed a family of SUN marks but the Hearing Officer decided that even if this was the case, and he did not accept that it had been proved, it would not assist the applicant in this case.

Summary

The applicant for invalidity filed details of a number of registrations (both UK and Community) of SUN and SUN and other words and devices in Classes 9, 35, 36 and 42. These registration covered the same and similar goods and services as those included within the registered proprietor’s registrations. The applicant also filed details of use of its various marks including SUN, SUN MICROSYSTEMS, SUN DEVICE, SUNLINK etc. The Hearing Officer accepted that there had been use of a number of SUN marks but as individual figures had not been provided he was unable to gauge the scale of use of each mark. However, he accepted that the applicants had a reputation in a range of SUN marks including SUN MICROSYSTEMS.

Under Section 3(6) the Hearing Officer noted that the applicant had filed no evidence to substantiate their allegation for bad faith and he dismissed this ground.

The essential ground of these proceedings was under Section 5(2)(b) and as a first step the Hearing Officer compared the respective marks. While all the applicant’s marks incorporated the SUN element and this element is consumed within the registered proprietor’s mark the Hearing Officer considered the respective marks to be totally dissimilar conceptually, orally and visually. Even assuming identical goods and services the Hearing Officer considered that there was no likelihood of confusion. Invalidity failed on this ground.

In view of this finding under Sections 5(2)(b) that the respective marks were not similar the Hearing Officer also dismissed the ground under Section 5(4)(a) - Passing Off.

Full decision O/230/02 PDF document115Kb