Trade mark decision
- BL Number
- O/270/99
- Decision date
- 6 August 1999
- Hearing Officer
- Mr M Foley
- Mark
- POST GUARD
- Classes
- 36
- Applicants
- Bridge Insurance Brokers (Manchester) Ltd
- Opponent
- The Post Office
- Opposition
- Sections 5(2)(b), 5(3) & 5(4)(a)
Result
Section 5(2)(b): - Opposition failed.
Section 5(3): - Opposition not pursued.
Section 5(4)(a): - Opposition succeeded.
Points Of Interest
- 1. Passing-Off - a rare instance of an opponent succeeding under Section 5(4)(a).
Summary
Opposition based on opponent’s various registrations of the marks (a) POSTGUARD with triangle device in Classes 9 and 16, (b) THE POST OFFICE in Class 36 and (c) POST OFFICE within oval or lozenge-shaped device in Class 36.
In dismissing opposition under Section 5(2)(b), the Hearing Officer found no similarity between the mark in suit and either of the opponent’s marks (b) and (c), and in his view the opponent failed to substantiate a claim to a reputation in the word POST (solus). Moreover, he could see no overlap in the respective channels of trade under the mark in suit (covering insurance services, notably for sub-postmasters) and the opponent’s marks (a) (covering stationery and computer items) - VISA trade mark case distinguished. There was therefore no likelihood of confusion.
However, in regard to the opposition under Section 5(4)(a), although he found no evidence of use of marks (a), and consequently no reputation under those marks, he nevertheless proceeded to uphold the opposition on this ground. In his view, the opponent had demonstrated in relation to use of marks (c) that a particular stylised form and colour combination (red and yellow) used in connection with the word POST would cause most people to assume a connection with the opponent.
Giving due weight to evidence that the applicant’s were using the mark in suit in a style and colour combination "craftily chosen to take advantage of the association with The Post Office", he was persuaded that the respective customers could be deceived and that damage could result.
Full decision O/270/99 
59Kb
