Trade mark decision

BL Number
Decision date
31 July 2001
Hearing Officer
Mr J MacGillivray
Gary Steven Berlyn Trading as Replay Promotions
Fashion Box SpA
Section 5(2)(b)


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

Points Of Interest

  • The opponents had a second Community application for the mark REPLAY which has not yet achieved registration. However in view of the decision taken above there was no need for a provisional decision in relation to this mark.


This application was filed on 7 July 1997, whereas the opponents had applied for registration of the mark REPLAY COUNTRY STORE in Class 35 as a Community mark on 18 April 1997. As this mark has now proceeded to registration on 6 November 2000, the opponents have an earlier right in Class 35 in respect of the same and similar services. The applicant claimed to have used his mark since 1993 and provided details of turnover and advertising through to 1997. He claimed the opponents were essentially in the clothing business and did not offer Class 35 services to third parties.

Under Section 5(2)(b) the Hearing Officer noted that identical services were at issue and went on to compare the respective marks. He concluded that as REPLAY would be seen as the distinctive element in each of the marks he considered them to be confusingly similar. Thus the opponents were successful on this ground.

Full decision O/328/01 PDF document34Kb