Trade mark decision

BL Number
O/305/05
Decision date
11 November 2005
Appointed Person
Mr Richard Arnold QC
Mark
Ben Sherman merchandising
Classes
35, 41
Applicant
Alan Sugarman
Opponent
Ben Sherman Group Limited
Opposition
Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(6): - Decision set aside.

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

Section 5(3): - Opposition successful.

Section 5(4)(a): - Not decided.

Points Of Interest

Summary

In his decision dated 18 April 2005 (BL O/100/05) the Hearing Officer found the opposition successful under Sections 3(6) and 5(3); partially successful under Section 5(2)(b) and Section 5(4)(a) not decided.

The Appointed Person first of all reviewed the Section 5(2)(b) ground and agreed with the Hearing Officer's decision as regards Class 41. However, the Hearing Officer had concluded that the opponent's goods were not similar to the applicant's Class 35 services and therefore the opposition failed in respect of this Class. The Appointed Person disagreed with this view and decided that in view of the similarity of the respective marks and the extensive reputation the opponent had in its mark the Hearing Officer should have also found for the opponent in respect of this Class. Thus the opponent was found to be successful on the Section 5(2) ground.

The Appointed Person confirmed the Hearing Officer's decision under Section 5(3) and his reasoning in respect of Section 5(4)(a) which was not decided.

Insofar as Section 3(6) was concerned the Appointed Person decided that the Hearing Officer's reasons for finding for the opponent on this ground were flawed. In his view, the opponent had filed insufficient evidence to justify the Hearing Officer's conclusions and he therefore concluded that the Hearing Officer had misdirected himself in law and that the decision must be set aside. In reaching this decision the Appointed Person stated that it was not a dismissal of the opponent's ground under Section 3(6) and if necessary he would reconsider the matter or return the case to the Hearing Officer for a fresh decision. However, in view of his decision in respect of the other grounds of objection the Appointed Person saw no need to consider the matter further.

Full decision O/305/05 PDF document70Kb