Trade mark decision

BL Number

O/274/07

Decision date

14 September 2007

Appointed Person

Professor Ruth Annand

Mark

STERISHIELD

Classes

02

Applicant for Invalidation

Liquid Plastics Limited

Registered Proprietor

Imperial Chemical Industries Ltd

Invalidation

Section 47(1) & (2) based on Sections 3(1)(a)(b) & (c), 5(2)(b) & 5(3)

Result

Section 47(1) based on Section 3(1)(c): Appeal dismissed. Section 47(2) based on Section 5(2)(b): Appeal dismissed.

Points Of Interest

• See also Hearing Officer’s decision dated 5 January 2007 (BL O/006/07).

Summary

The applicant for invalidation appealed the Hearing Officer’s decision of 5 January 2007 (BL O/006/07) but only in respect of the grounds under Sections 3(1)(c) and 5(2)(b).

With regard to the Section 3(1)(c) ground the applicant claimed that the Hearing Officer had given insufficient weight to the descriptive nature of the elements STERI and SHIELD. However, the Appointed Person reviewed the Hearing Officer’s reasoning and was satisfied that he had taken all the relevant facts into consideration and his decision to dismiss this ground was approved by the Appointed Person.

As regards the ground under Section 5(2)(b) the applicant submitted that the Hearing Officer had artificially dissected the respective marks STERISHIELD and STERISHEEN instead of comparing them overall; that he had failed to apply the interdependency principle and he had given insufficient weight to the identical prefixes when comparing the two marks. After reviewing the evidence before the Hearing Officer and giving full consideration to his decision the Appointed Person decided that the Hearing Officer had taken all the relevant factors into account in reaching his decision and he dismissed the appeal.

Full decision O/274/07 46Kb