Trade mark decision

BL Number
O/294/08
Decision date
24 October 2008
Hearing Officer
Mr O Morris
Mark
KOKOA
Classes
18, 25, 35
Applicant
Chen Aoyuan
Opponent
Kookaï
Opposition
Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): Opposition partially successful. Section 5(3): Opposition partially successful. Section 5(4)(a): Opposition partially successful.

Points Of Interest

  • As described.

Summary

The opponent owns registrations of the marks KOOKAI and KOOKAÏ covering a range of goods in Classes 18 and 25. It also filed evidence of use showing significant sales from the year 2000 onwards and it claimed to have promoted the mark by way of the internet, advertising and promotion.

In relation to two of its registrations the opponent was required to provide “proof of use”. In its opposition the opponent made statements of use in relation to its earlier trade marks but the applicant did not deny the truth of those claims. Consequently the Hearing Officer decided that no further consideration need be given to this aspect of the proceedings.

Under Section 5(2)(b) the Hearing Officer established that identical goods were at issue in respect of the respective goods in Classes 18 and 25. Also as the applicant’s retail services included sales of leather goods and clothing, such services were similar to the leather and clothing goods in Classes 18 and 25. The only services which fell outside this finding of similarity were import-export agencies relating to leather goods and clothing.

With regard to the respective marks KOKOA and KOOKAÏ the Hearing Officer considered them to be visually similar and to a lesser degree aurally similar. Taking the overall situation into consideration the Hearing Officer considered that in relation to the identical goods and similar services there was a likelihood of confusion. Opposition successful in relation to such goods and services.

Under Sections 5(3) and 5(4)(a) the Hearing Officer only considered the grounds in relation to the import-export agencies which he had found not to be similar to the opponent’s goods and services. He concluded that such services were so far removed from the opponent’s goods and services that the likelihood of confusion was unlikely. He went on to decide that the opponent failed in its grounds of opposition under Sections 5(3) and 5(4)(a) in relation to such services.

Full decision O/294/08 PDF document109Kb