Trade mark decision

BL Number
O/304/08
Decision date
7 November 2008
Hearing Officer
Mr E S Smith
Mark
SACOMA & device
Classes
25, 26, 35, 41
Applicant
Mrs Perez Ochieng
Opponent
Sanoma Wsoy Oyj
Opposition
Section 5(2)(b)

Result

Section 5(2)(b): Opposition partially successful.

Points Of Interest

  • As described

Summary

The opponent’s opposition was based on its registration for the mark SANOMA registered in respect of goods and services in Classes 25, 35 and 41. The opponent also filed evidence of use of its mark but this evidence was somewhat vague as regards use in the UK and the Hearing Officer did not accept that the mark merited an enhanced reputation.

Under Section 5(2)(b) the Hearing Officer compared the respective goods and services and concluded that as regards Class 25 the respective goods were identical with the exception of “textile nappies for babies” where only a low level of similarity existed. In Class 35 the respective services were identical or similar with the exception of “auctioneering, trade fairs, opinion polling”. In Class 41 identical services were at issue. Class 26 was not subject to any opposition.

With regard to a comparison of the respective marks SACOMA and device and SANOMA the Hearing Officer decided that the word SACOMA was the dominant element in the opponent’s mark and went on to conclude that the respective marks were similar both visually and aurally. Overall the Hearing Officer concluded that there was a likelihood of confusion in respect of identical and similar goods and services and that opposition succeeded in respect of such goods and services.

Application allowed to proceed in respect of:

Class 25 Textile nappies for babies.

Class 26 As applied for.

Class 35 Auctioneering, trade fairs, opinion polling.

Full decision O/304/08 PDF document117Kb