Trade mark decision

BL Number

O/309/03

Decision date

16 October 2003

Hearing Officer

Mr D Landau

Mark

TELECOM ONE

Classes

09, 16, 35, 36, 38, 39, 42

Applicant

Deutsche Telekom AG

Opponent

Telecom One Limited

Opposition

Sections 3(1)(b); 3(1)(c); 3(6); 5(2)(b); 5(4)(a)

Result

Section 3(1)(b) - Opposition dismissed.

Section 3(1)(c) - Opposition dismissed.

Section 3(6) - Opposition dismissed.

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

Section 5(4)(a) - Opposition partially successful.

Points Of Interest

• 1. effect of disclaimers in earlier registrations.
• 2. bad faith.
• 3. comparison of the marks 01 TELECOMS v TELECOM 1.
• 4. comparison of the goods/services.

Summary

This was a consolidated opposition to requests for protection of three international registrations. The opponents claimed, inter alia, prior use of the mark TELECOM ONE, and registrations of '01 TELECOMS' and 'TELECOM 1 and device'. (TELECOM & ONE were disclaimed). Dealing first with the objections under Section 3(1)(c) the Hearing Officer concluded that the difference between the marks and terms which may serve in Trade to designate the characteristic of any of the goods or services specified was 'more than minimal'. This ground was dismissed.

Neither did the Hearing Officer consider that the marks were devoid of any distinctive character. He could "imagine them working quite adequately for goods and services relating to telecommunications". The Section 3(1)(b) objection was dismissed.

The objection under Section 3(6) was twofold: first, it was claimed that the applicants had known of the opponents’ prior rights, and secondly it was claimed that there was no bona fide intentions to use the marks over the full range of the goods and services specified.

The Hearing Officer concluded that the opponents had not made out a prima facie case in support of the first of these allegations. Hence there was no onus on the applicants to do more than deny it. Neither could he find that the specifications in the applications were in any way 'odd or excessive'. The opponents' claim was merely speculative. The Section 3(6) ground was dismissed in its entirety.

Turning to the objection under Section 5(2)(b), the Hearing Officer based his consideration on the opponents’ mark '01 TELECOMS'. They could not rely on their other mark, he found, in view of the disclaimers attaching to it. A detailed analysis of the matter resulted in a finding that there existed a likelihood of confusion in respect of some of the goods specified.

Under Section 5(4)(a), the Hearing Officer found the opponents successful in respect of some of the goods and services in the application.

Full decision O/309/03 162Kb