Trade mark decision

BL Number
Decision date
17 September 2003
Hearing Officer
Mr D Landau
The Black & Decker Corporation
Atlas Copco Aktiebolag
Sections 3(1)(b); 3(1)(c) & 3(1)(d)


Section 3(1)(b) - Section 3(1)(b):

Points Of Interest

  • 1. Reference to ECJ : not necessary in light of the facts of the case.
  • 2. Estoppel on grounds of inconsistency : inconsistency if any should be pleaded in the later filed action (before OHIM).
  • 3. Survey evidence : self-elected and unexplained population.


The Hearing Officer had first to consider a request for a stay of proceedings to await the outcome of a case before the ECJ which had raised a relevant point. The Hearing Officer, however, having heard the case found that it could be decided on its own facts and without the need for a reference to the ECJ.

The question of estoppel also arose, in that it was contended the opponents had themselves claimed exclusive use, in another case before OHIM , of the colour combinations which they here sought to characterise as commonplace in the trade. The Hearing Officer noted that this opposition concerned absolute grounds, whereas opposition on such grounds was not possible before OHIM . The claim of estoppel on grounds of inconsistency was therefore not sustainable. Moreover, it was the subsequent action, before OHIM , which might be considered inconsistent and the claim should therefore be made in that forum.

The Hearing Officer then considered whether the applicants could claim the benefit of the proviso to Section 3; if they could this would dispose of the objections on the grounds cited in the pleadings. The survey evidence however did not establish that the colour combination claimed in the applications had acquired a secondary meaning. The opposition under Section 3(1)(b) succeeded and the Hearing Officer made no finding under the other grounds pleaded.

Full decision O/281/03 PDF document135Kb