Trade mark decision

BL Number
O/274/05
Decision date
12 October 2005
Hearing Officer
Mr G Salthouse
Mark
FIREDSTONE
Classes
19
Applicant
Marshalls Mono Limited
Opponent
Bridgestone Licensing Services Inc
Opposition
Sections 5(2)(b) & 5(3)

Result

Section 5(2)(b): - Opposition failed.

Section 5(3): - Opposition failed.

Points Of Interest

  • 1. None

Summary

The opponent's opposition was based on its ownership of a number of registrations for the mark FIRESTONE in Classes 7, 12, 17, 19 and 37. It filed evidence of use of its mark in relation to motor vehicle tyres where it is accepted that it has a significant reputation; it also filed details of more modest use in relation to a rubber roofing membrane (Class 19) for use in the construction industry. The applicant's goods are paving materials, paving and walling blocks and bricks.

Under Section 5(2)(b) the Hearing Officer had little difficulty in deciding that the respective marks FIRESTONE and FIREDSTONE are confusingly similar and went on to compare the applicant's goods, paving materials, with the opponent's goods rubber roofing membrane, and its Class 37 services, roofing construction and repair services. As the respective goods are used for quite different purposes and are not in competition with each other, the Hearing Officer concluded that they are not similar. That being the ease he went on to conclude that the applicant's goods are not similar to the opponent's services. Overall, bearing in mind the difference in the respective marks, the Hearing officer decided that there is no likelihood of confusion and that the opposition failed on this ground.

Under Section 5(3) the Hearing Officer accepted that the opponent had a significant reputation in its mark in relation to tyres but it had failed to show, by way of evidence, that use of the mark in suit on goods which are very dissimilar, namely paving materials, would cause detriment. While the opponent's mark might be called to mind when the applicant's mark is encountered it would not affect the consumers choice of goods or damage the opponent's marks. Opposition failed on this ground.

Full decision O/274/05 PDF document48Kb