Trade mark decision

BL Number

O/240/01

Decision date

30 May 2001

Hearing Officer

Mr J MacGillivray

Mark

MAGIGROW

Classes

01

Applicant

Magigrow International Limited

Opponent

Scotts Miracle-gro Products Inc

Opposition

Sections 3(6), 5(2)(b) & 5(4)(a)

Result

Section 3(6) - Opposition failed

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. The opponents appealed to the Appointed Person. In her decision dated 19 December 2001 (BL O/583/01) the Appointed Person upheld the Hearing Officer’s decision.

Summary

The opponents opposition was based on their ownership of a number of MIRACLE-GRO registrations and a significant reputation in that mark. The applicants had only very modest user prior to the date of application. Under Section 5(2)(b) it was accepted that identical goods were at issue so the dispute rested on a comparison of the respective marks MAGI-GROW and MIRACLE-GRO. The Hearing Officer accepted that MAGI might be seen as indicating the word MAGIC and thus there was some conceptual similarities between the two marks. However, comparing the marks as wholes and taking into account the possibility of imperfect recollection, the Hearing Officer considered that the marks were sufficiently far enough apart for there to be no real likelihood of confusion.

Under Section 5(4)(a) - Passing Off - The Hearing Officer noted that while the opponents had a reputation in their mark at the relevant date they had not submitted any evidence of actual confusion in the marketplace. Additionally, while there was similarities in the packaging and "get-up" this was insufficient by itself to lead to misrepresentation or confusion since the respective marks MIRACLE-GRO and MAGI-GRO were strong indicators.

Among the evidence filed was an extract from a DIY Magazine which indicated that the applicants were seeking a name like or similar to MIRACLE-GRO. The opponents claimed that this showed bad faith as defined within Section 3(6). However, as the Hearing Officer had concluded in this case that the respective marks are not confusingly similar he did not accept that the applicants had acted in bad faith.

Full decision O/240/01 58Kb