Trade mark decision

BL Number

O/310/01

Decision date

18 July 2001

Hearing Officer

Mr S P Rowan

Mark

THANK GOD ITS BRITISH T.G.I.B

Classes

42

Applicant

Andrew Southam

Opponent

TGI Friday’s of Minnesota Inc

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

• 1. If a party claims to have rights in an element in a composite mark then, if the claim is to have any merit, it must be buttressed by evidence to support the claim.

Summary

The opponents opposition was based on their ownership and use of the mark TGI Friday’s (in various forms) in relation to restaurant and bar services. The Hearing Officer found that the opponents had a reputation in the mark as a totality but no evidence was available to support a claim to have a separate and distinct reputation in the letters TGI in the context that it stands for "Thank God it’s"

Under Section 5(2)(b) the Hearing Officer noted that identical or very similar services were at issue and that the conflict fell to be decided by comparing the respective marks. Visually and aurally the Hearing Officer found the respective marks to be very different. While he accepted that there was some conceptual similarity based on the presence of the letters TGI in the respective marks he considered that this was insufficient to reach a view that there was a likelihood of confusion within the context of Section 5(2)(b).

Under Sections 5(3) and 5(4)(a) - Passing Off - the Hearing Officer decided that the opponents could not be in any better position under these sections as compared to Section 5(2)(b). He, therefore, found that the opponents failed on these grounds.

Full decision O/310/01 82Kb