Trade mark decision

BL Number
O/274/06
Decision date
25 September 2006
Hearing Officer
Mr D Landau
Mark
DIGITAL REPLAY
Classes
09, 28
Applicant
Wheels in Motion (Innovations) Ltd
Opponent
Fashion Box SpA
Opposition
Sections 5(2)(b), 5(4)(a) & 56

Result

Section 5(2)(b): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed.

Points Of Interest

  • See also BL O/276/06

Summary

The opponent owns the mark REPLAY registered in a range of Classes, particularly 3, 18 and 25 but also 9 and 28. It also filed evidence of use in respect of many classes of goods but its main area of activity appears to be clothing and accessories therefore. (Class 25) The opponent also referred to user overseas.

Under Section 56 the Hearing Officer observed that if the opponent was to have a reputation it was most likely to be in respect of clothing and clothing accessories and these goods were included in its UK and CTM registrations. The ground under Section 56 was dismissed.

As regards the ground under Section 5(2)(b) the Hearing Officer compared the respective goods and concluded that they were not similar, indeed in his view they were positively dissimilar. As the respective goods were not similar the ground under Section 5(2)(b) must fail.

The ground under Section 5(4)(a) also failed because the Hearing Officer concluded that the respective fields of activity were so far apart that there was no likelihood of confusion or deception. Therefore there was no likelihood of the opponent suffering damage to the goodwill in its mark.

Full decision O/274/06 PDF document93Kb