Trade mark decision

BL Number
O/244/02
Decision date
17 June 2002
Hearing Officer
Mr M Foley
Mark
INTEL-PLAY
Classes
28
Applicant
Kirpal Singh Sihra
Opponent
Intel Corporation
Opposition
Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b) - Opposition partially successful

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • The opponents appealed to the High Court. In his decision dated 24 January 2003 [2003] RPC 44 Mr Justice Patten upheld the Hearing Officer’s decision under Section 5(2)(b) but allowed the appeal under Section 5(3). Section 5(4)(a) not considered.

Summary

The opponents opposition was based on their ownership of a number of INTEL marks registered in Class 9 for computers, microprocessors and electronic apparatus for associated use. They also filed evidence to show their reputation in this field, which was significant, and also sought to show links with the toys and games industry.

The applicant claimed that the mark at issue had been chosen because INTEL is short for intelligent to convey the idea of ‘intelligent play’ in relation to the goods applied for. This was disputed by the opponents and rejected by the Hearing Officer as INTEL is not an abbreviation for 'intelligent' nor is it a known shortening of that word.

Under Section 5(2)(b) the Hearing Officer determined that similar goods were at issue and that the respective marks INTEL and INTEL PLAY were very similar. The opponents were therefore successful on this ground unless the applicant restricted his specification to "Interlocking blocks being constructional toy puzzles".

Insofar as the ground under Sections 5(3) and 5(4)(a) were concerned the Hearing Officer accepted that the opponents had a significant reputation in their core activity but there was little evidence presented to convince him that at the relevant date, the opponents reputation or goodwill extended into the non-electronic toys and games field. He thus found that the opponents failed on these grounds provided the application restricted his specification as suggested under Section 5(2)(b).

Full decision O/244/02 PDF document74Kb