Trade mark decision

BL Number

O/319/05

Decision date

7 December 2005

Hearing Officer

Mr M Reynolds

Mark

DV8

Classes

09

Applicant

Timothy Roy Barrett-Smith

Opponent

Glenbeigh Limited (previously Jobok Limited t/a DV8 Shoes)

Opposition

Sections 5(2)(a); 5(2)(b) & 5(4)(a)

Result

Section 5(2)(a): - Opposition failed.

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

Section 5(4)(a): - Opposition failed.

Points Of Interest

• 1. Retail Services "I can see no basis therefore for artificially restricting the scope of the term 'retail services' though that is not of course to say that what is shown by a party's own use is irrelevant".
• 2. Retail Services Considerations in respect of a comparison of goods and retail services; paragraph 50 of the Decision.

Summary

The opposition was based on registrations of the marks dv8 and footprint device DV8 (solus) in Classes 16,18,25 & 35, and on one registration of the mark DV8 in relation to retail services, footgear, headgear, bags and 'other associated goods'.

Having reviewed the relevant guidance on the subject the Hearing Officer found that the opponent's claim under Section 5(2)(a) was untenable. He therefore went on to consider the matter under Section 5(2)(b).

The respective marks were found to be 'similar to a high degree'. After detailed consideration the Hearing Officer found that the opponent did not succeed 'in so far as its case is based on the goods in its registration'. He therefore went on to consider what was the effect of the opponent’s registration in respect of retail services in Class 35. Having considered the matter in some detail the Hearing Officer eventually found that the competing goods and services were similar to a material extent. In the result the opposition succeeded under Section 5(2)(b).

There was insufficient evidence of goodwill and reputation to support a case under Section 5(4)(a) and this ground failed.

Full decision O/319/05 62Kb