Trade mark decision

BL Number

O/266/04

Decision date

1 September 2004

Hearing Officer

Mr J MacGillivray

Mark

PRINCIPLE

Applicant

Principe SPA

Opponent

Principles Retail Limited

Opposition

Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. The applicant had a co-existing registration for the mark in suit in Class 18. This was of no assistance to the applicant without evidence showing how it had been obtained and that the mark had been used in the marketplace. Considered to be merely "state of the Register" evidence.

Summary

This opposition did not apply to the Class 42 application.

The opponent owned a number of registrations for the mark PRINCIPLES in respect of the same and similar goods as those of the applicant. It also filed evidence of extensive use from 1985 onwards and the Hearing Officer accepted that the opponent had a reputation in its mark.

Under Section 5(2)(b) the Hearing Officer compared the respective marks bearing in mind that identical goods were at issue. Particular consideration was given to the word elements PRINCIPLES and PRINCIPE which have the first seven letters in common. The Hearing Officer decided that the public would recognise the well known word PRINCIPLES and would distinguish it form PRINCIPE which looked different and was likely to be pronounced differently. The public would also view the words as being conceptually different. Taking the other elements of the application’s mark into account the Hearing Officer concluded that overall the respective marks were not similar and that ground of opposition under Section 5(2)(b) failed.

In view of his finding under Section 5(2)(b) the Hearing Officer decided that the opponent was in no better position under Section 5(4)(a) and that that ground of opposition also failed.

Full decision O/266/04 71Kb