Trade mark decision

BL Number

O/326/07

Decision date

2 November 2007

Hearing Officer

Mr D Landau

Mark

DEVICE ONLY MARK

Classes

25

Applicant

Ascot (S&F) International Limited

Opponent

Hummel A/S

Opposition

Sections 5(1), 5(2)(a), 5(2)(b), 5(3) & 5(4)(a)

Result

Sections 5(1) & 5(2)(a): Opposition dismissed. Section 5(2)(b): Opposition successful. Section 5(3): Opposition dismissed. Section 5(4)(a): Opposition failed.

Points Of Interest

• The Hearing Officer awarded the opponent the bare minimum of its costs because the opponent had pressed on with grounds which it had been advised were unsustainable and the evidence filed in support of the opposition was poor.

Summary

The opponent’s opposition started off with five earlier Community trade marks registrations in Class 25 but two required proof of use and as this was not filed, they fell away. With regard to the remaining registrations the Hearing Officer determined that they were not identical to the mark in suit so the grounds under Sections 5(1) & 5(2)(a) were dismissed. The ground under Section 5(3) was also dismissed because the opponent filed only evidence of use in the UK and not The European Community as required.

As regards the passing off ground, Section 5(4)(a) the Hearing Officer noted that the opponent’s evidence related to only one of the three marks relied upon and it was very weak. The Hearing Officer did not consider it sufficient to prove a goodwill and reputation at the relevant date and dismissed this ground of opposition.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the mark in suit with the mark he considered represented the opponent’s best case, two chevrons pointing left to right. Essentially this mark is included as an element of the mark in suit and the Hearing Officer considered the respective marks to be similar. He went on to find that there was a likelihood of confusion and that opposition succeeded on this ground.

Full decision O/326/07 121Kb