Trade mark decision

BL Number: O/231/07
Decision date: 23 July 2007
Appointed Person: Ms A Michaels
Mark: JUICY DIAMOND JUICY JUICY SILVER (Three applications)
Classes: 03, 14
Applicant/Appellant: Talat Ismail
Opponents/Respondent: Juicy Couture Inc; Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in opposition proceedings.

Result

Appeal successful to a limited extent; remainder of the decision upheld. Effect of the Appointed Person’s decision suspended.

Points Of Interest

1. Practise on ‘retail services’
2. Suspension of decision pending outcome of invalidity proceedings

Summary

At first instance (see BL O/217/06) the Hearing Officer had found the opponents successful on the basis of their earlier rights. The applicant appealed on the basis that the Hearing Officer:- had not applied the appropriate test in his assessment of likelihood of confusion; had wrongly treated all the marks as though they were no more than the word JUICY; had made mistakes in assessing similarity in the goods/services - particularly in assessing similarity with the retail services. It was also contended that he had erred in his findings under sections 5(3) and 5(4)(a). Since that hearing two further issues had emerged:- i) The Hearing Officer had taken account of one registration, JUICY BABY, that was not an earlier right and ii) the opponents earlier CTM rights where the subject of invalidity proceedings. The question of suspension therefore arose. Having reviewed the Hearing Officer’s decision the Appointed Person found two minor errors in his findings. His error in taking account of JUICY BABY had no material effect. The Appointed Person made minor adjustments to the decision below and the Appeal succeeded to that limited extent. The Appointed Person ruled that her decision was suspended pending the outcome of the CTM invalidity proceedings.

Full decision O/231/07 169Kb