Trade mark decision

BL Number
Decision date
27 August 1999
Hearing Officer
Mr M Knight
Duramax Inc
H & R Johnson Tiles Ltd
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. Additional evidence under Rule 13(7) - admitted (opponent not objecting) even though Hearing Officer not wholly satisfied SWISS MISS criteria met.


Opposition based on opponent's registration of the trade mark JOHNSON in Class 19 in respect of ceramic tiles, and use of that mark in the UK in respect of related products since 1901. Prior to the Hearing, the specification for the mark in suit (ie adhesives comprising waterproof mastic resins and epoxy compounds) was restricted to exclude "adhesives for ceramic tiles".

Applying the usual tests under Section 5(2)(b), the Hearing Officer found the differences between respective marks to be insufficient for him to say with any confidence that the public would not associate the opponent’s mark with the applicant. However, he concluded that the similarity of the trade marks was not such as to offset the differences between the respective goods, and there was therefore no likelihood of confusion as to origin of the goods and opposition on that ground failed.

In his approach to opposition under Section 5(3), the Hearing Officer accepted on the basis of turnover figures that the opponent had a reputation in its trade mark in respect of ceramic tiles (though he would have wished to have evidence as to its position in the ceramic tile market and independent evidence of the depth of public recognition of its reputation). However, in the absence of any evidence that registration of the mark in suit was likely to take advantage of or be detrimental to the repute of the opponent’s mark, he dismissed opposition on that ground (applying AUDI-MED).

In also dismissing opposition under Section 5(4)(a), the Hearing Officer held, briefly, that the applicant operated in a different field to that in which the opponent had its reputation, and he could not see that the opponent would suffer any damage.

Full decision O/300/99 PDF document28Kb