Trade mark decision

BL Number
O/238/05
Decision date
31 August 2005
Appointed Person
Mr Richard Arnold QC
Mark
EXCEL
Classes
12
Applicant
Professional Cycle Manufacturing Limited
Opponent
Halfords Limited
Opposition
Section 5(2)(b)

Result

Section 5(2)(b): - Opposition successful. Applicant’s appeal dismissed. Opponent’s cross appeal allowed.

Points Of Interest

  • As summarised.

Summary

In his decision dated 4 February 2005 (BL O/034/05) the Hearing Officer decided that the opponent should succeed under Section 5(2)(b) in respect of its registered mark APOLLO EXCEL. The applicant appealed on the basis that there had been no confusion in fact between the respective marks EXCEL and APOLLO EXCEL and sufficient regard had not been paid to the evidence of honest concurrent use. The opponent cross-appealed on the grounds that it was entitled to rely on another earlier right – the CTM EXEL which was raised in the grounds of opposition and which had been withdrawn at the hearing before the Hearing Officer after he questioned its relevance. In a letter to the Hearing Officer following the hearing, the opponent had re-raised the matter but the Hearing Officer had not referred to that letter in his decision.

In view of the number of issues before him the Appointed Person considered that he should consider the opposition afresh. After full consideration as regards the matter of honest concurrent use the Appointed Person noted that there was very little evidence that the opponent had used its mark prior to the relevant date. Therefore, there could be no honest concurrent use by only one party. That being the case there was no need to consider whether the applicant had used the mark applied for or only in conjunction with other marks.

With regard to the opponent’s cross appeal the Appointed Person decided that it could rely in its opposition on the CTM and the Hearing Officer had been wrong to suggest otherwise. This mark is very similar to the applicant’s mark and the applicant had not claimed the benefit of honest concurrent use in respect of this mark. Opposition thus succeeded in respect of this mark

Full decision O/238/05 PDF document44Kb