Trade mark decision

BL Number
O/320/08
Decision date
5 December 2008
Hearing Officer
Mr O Morris
Mark
Nextstar and device of stars
Classes
09, 11
Applicant
Yüksel Elektroteknik Sanayi Ve Ticaret Limited Sirketi
Opponent
Next Retail Limited
Opposition
Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Sections 5(2)(b): Opposition partially successful Sections 5(3): Opposition partially successful Sections5(4)(a): Opposition partially successful

Points Of Interest

  • The opponent asked that the applicant’s defence be struck out and judgement issued in its favour because the applicant had filed no evidence, made no submissions or attended the hearing. The Hearing Officer refused the request (paragraphs 14, 15 and 16 of the decision)

Summary

The opponent’s opposition was based on registrations for the mark NEXT in a range of classes including classes 9, 11, 14, 25 and 35. The opponent filed details of use of its mark which showed a massive reputation in relation to clothing (class 25) and a more limited reputation in relation to a range of household goods, including electrical lighting goods (class 11) and clocks and clock radios in class 14. The “proof of use” regulations applied to one of the opponent’s registrations and this lead to the restriction of the class 14 registration and the exclusion of some other classes for consideration.

Under section 5 (2)(b) the Hearing Officer carefully compared the respective goods and concluded that while some of the applicant’s goods listed in classes 9 & 11 were identical or similar to the opponent’s goods, there was also a range in both classes where there was no similarity or only very low level similarity. The Hearing Officer went on to compare the respective marks NEXT and NEXTSTAR and device of stars and concluded that there was a high degree of similarity because the opponent’s mark is immediately recognisable in the applicant’s mark. In relation to identical and similar goods the Hearing Officer decided confusion of the public was likely and that opposition succeeded in respect of such goods. The list of goods where opposition succeeds is set down at paragraph 84 of the decision and where opposition failed at paragraph 85.

The Hearing Officer went on to consider the grounds of opposition under sections 5(3) and 5(4)(a) but concluded that the opponent was in no better position under these grounds as compared to the ground under section 5(2)(b) and that opposition thus failed in relation to the goods listed at paragraph 85 of the decision.

Full decision O/320/08 PDF document222Kb