Trade mark decision

BL Number
Decision date
7 August 2002
Hearing Officer
Dr W J Trott
03, 09, 14, 16, 21, 24, 25, 27, 28, 32, 33, 35, 36, 38, 39, 41, 42
Ananova Limited
Nova Games Import - Export GmbH Co KG
Sections 3(6), 5(2)(b) & 5(4)(a)


Section 3(6): - Opposition failed

Section 5(2)(b): - Opposition failed

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

Points Of Interest

  • 1. Section 3(6): A useful review of the application of Section 3(6) - especially in relation to "intention to use".


The opponents opposition under Section 5 was based on their ownership of a registration in Class 9 of the mark NOVA and star device in respect of “Coin-activated playing machines and electric devices for transferring money; but not including goods incorporating computer programmes”. The opponents filed details of use of their mark but the Hearing Officer did not accept that there was sufficient evidence to lead to enhanced distinctiveness. He accepted, however, that the opponents mark was an inherently distinctive mark.

Under Section 3(6) the opponents claimed the applicants could not have an intention to use their mark in respect of all the goods and services claimed since their mark is currently only used on an Internet Website in relation to a “virtual newscaster”. The applicants had claimed an intention to use on the application Form TM3 and a declarant on their behalf confirmed this claim. The Hearing Officer carried out a full review of the guidance in reported cases about the application of Section 3(6) - bad faith - in relation to “intention to use”. In conclusion the Hearing Officer felt that the opponents had failed to substantiate the claim of bad faith and he thus found that opposition failed on this ground.

Under Section 5(2)(b) the Hearing Officer found that there was a clash of identical and similar goods between the opponents registration in Class 9 and the applicants application in that Class. In comparing the respective marks NOVA and star device and ANANOVA the Hearing Officer considered them to be visually, phonetically and conceptually different and concluded that in relation to the specialist goods at issue, there was no likelihood of confusion. Opposition failed on this ground.

The opponents opposition under Section 5(4)(a) - Passing Off - also failed. The Hearing Officer concluded from their evidence that their goodwill in their mark NOVA and star device was not great and in any event he had found that the respective marks were not confusingly similar.

Full decision O/320/02 PDF document83Kb