Trade mark decision

BL Number
Decision date
22 August 2006
Hearing Officer
Mr M Reynolds
Applicant for Invalidation
O2 Holdings Limited
Registered Proprietor
Zero 9 Ltd
Section 47(2) based on Sections 5(2)(b) & 5(3)


Section 47(2) & Section 5(2)(b): Invalidity action successful. Section 47(2) & Section 5(3): Not considered.

Points Of Interest

  • None


The applicant is the owner of a number of O2 marks registered in Classes 9 and 38. The applicant also filed evidence of substantial user and the Hearing Officer accepted that it had become highly distinctive at the relevant date, the date of application to register the mark in suit.

Under Section 5(2)(b) the Hearing Officer noted that the registered proprietor had said the parties were not in the same field of business as it offered Premium Rate fixed line carrier services whereas the applicant was in the field of mobile telephones. However, the Hearing Officer observed that he had to take account of the respective specifications and both included general terms relating to telecommunications. At the very least very similar services were at issue and could well be identical. As regards the respective marks the Hearing Officer was of the opinion that they were similar bearing in mind that the mark O2 has such a reputation and the evidence that no other party uses a chemical symbol for oxygen in this area of trade. The Hearing Officer accepted that there might not be direct confusion but he believed that the public would assume that the O9 mark was being used by a party related to the applicant or that the applicant was extending its range of services. Invalidation succeeded on this ground.

In view of his decision under Section 47(2) and 5(2)(b) the Hearing Officer saw no need to consider the ground under Section 5(3).

Full decision O/240/06 PDF document57Kb