Trade mark decision

BL Number
Decision date
21 August 2000
Hearing Officer
Dr W J Trott
Top Shop/Top Man Limited
Hein Gericke GmbH
Section 5(2)


Section 5(2) - Opposition succeeded

Points Of Interest

  • 1. Even if an earlier trade mark is not registered at the date of filing of an opposition it is an earlier right if registered at the time the proceedings are decided.
  • 2. Honest concurrent use enables an applicant to have his mark advertised. If opposition proceedings arise honest concurrent use is not a relevant factor in reaching a decision. (But see O/372/00. Mr Foley’s decision dated 6 October 2000).


In earlier proceedings between the parties the applicants had opposed the registration of the opponents mark - on which they now rely in these proceedings. That mark consists of the words PRO SPORT set within a steering wheel on a checkered flag. The words Hein Gericke appear in smaller print.

The applicants argued that the opponents mark was not an earlier trade mark in the context of Section 6 of the Act; that the words PRO SPORTS were non-distinctive and that the opponents could only claim rights in their mark as a totality. Thus as they had extensive use of their mark - it had proceeded on evidence of honest concurrent use under Section 7(2) - their mark should be allowed to proceed to advertisement.

The Hearing Officer rejected the applicants arguments and deemed the opponents mark to be an earlier right for the purposes of Section 5(2). Additionally once opposition proceedings are reached the case must be decided on its merits and honest concurrent use plays no part in the decision. As the applicants had filed no evidence to show that the words PRO SPORT were descriptive and non distinctive the Hearing Officer concluded that the conflict fell to be decided between the applicants PRO SPORT mark and the dominant words in the opportunity mark PRO SPORTS. As identical goods were at issue there was a real likelihood of confusion. Opposition succeeded.

Full decision O/302/00 PDF document29Kb