Trade mark decision

BL Number
Decision date
6 October 2003
Hearing Officer
Dr W J Trott
09, 38, 42
Kabushiki Kaisha NTT NTT Docomo (NTT Docomo, Inc)
Gateway Incorporated
Sections 5(2)(b), 5(3) & 5(4)(a)


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

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

  • 1. None


The opponent opposition was based on three registrations in Class 9. Two are three dimensional packages with black and white markings thereon (Friesian cow markings) and the third consists of a device mark containing similar markings. The opponent forwarded extensive evidence of use but this was not well focussed and while the Hearing Officer accepted that the opponent had a reputation in their marks in conjunction with their well known mark GATEWAY there was little evidence to show that the opponent had a separate and distinct reputation in the black and white markings per se.

The Hearing Officer compared the respective marks and concluded that they were not at all similar. Indeed he thought this was also the view of the opponent but they appeared to be concerned that the mark in suit would be used in a certain way to make such use similar to their marks and the applicant had refused to give an undertaking regarding the style of use. The Hearing Officer decided that these fears were not well founded as the respective marks were so different.

He went on to find that the opponent failed in their opposition under Sections 5(2)(b), where identical and similar goods were at issue, under Section 5(3) in respect of dissimilar goods and services and also under Section 5(4)(a).

Full decision O/298/03 PDF document138Kb