Trade mark decision

BL Number
O/308/08
Decision date
13 November 2008
Hearing Officer
Mr M Reynolds
Mark
SIXTYSOMETHING SIXTY SOMETHING SIXTY-SOMETHING 60SOMETHING 60 SOMETHING 60-SOMETHING
Classes
09, 16, 25, 41
Applicant
Woodbridge Estates Limited
Opponent
Fronsac Investment S.A. & Upcoming TM S.A.
Opposition
Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

  • An argument based on the concept of sub-branding and the possibility, that the applicant’s series of marks might be seen as a family of marks and thus might lead to confusion, was dismissed by the Hearing Officer. (Paragraphs 46-50).

Summary

Initially the opponent quoted more than one mark in its statement of opposition but it later relied upon the Community Trade Mark MISS SIXTY registered in classes 9, 18 & 25. The applicant’s Class 41 was not opposed in these proceedings.

The relevant date of these proceedings was 22 April 2005 and the opponent only provided turnover figures from 2004 onwards. Even so, turnover for 2004 was in excess of 20M Euros with advertising in the same year of over 500,000 Euros. This together with other information and documentation lead the Hearing Officer to conclude that the opponent had an enhanced reputation in its mark in the young female clothing market for Section 5(2)(b) purposes and a reputation sufficient to support its grounds under Section 5(3) and 5(4)(a).

Under Section 5(2)(b) the Hearing Officer compared the respective specifications and concluded that identical and similar goods were at issue in Classes 9 & 25. An effort at the hearing to link the opponent’s bags in Class 18 with the applicant’s goods in Class 16 was rejected as that claim was never pleaded in the grounds of opposition. The Hearing Officer went on to compare the respective marks MISS SIXTY and SIXTYSOMETHING and decided that as the marks were so different conceptually that they were not similar. He went on to conclude that overall there was no likelihood of confusion and that the opposition under Section 5(2)(b) failed.

Opposition also failed on the Section 5(3) and 5(4)(a) grounds because of the Hearing Officer’s finding that the respective marks were not similar.

Full decision O/308/08 PDF document86Kb