Trade mark decision

BL Number: O/328/04
Decision date: 29 October 2004
Hearing Officer: Mr J MacGillivray
Mark: DEVICE ONLY MARK
Classes: 35, 36, 41, 42
Applicant: Denplan Limited
Opponent: Apple Computer Incorporated
Opposition: Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(6) - Opposition failed.

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

Section 5(3) - Opposition failed.

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

Points Of Interest

None

Summary

The opponent’s opposition was based on its ownership of a number of registrations for the mark APPLE and for an apple device mark in Classes 4, 35, 36, 41 and 42. It also provided evidence of extensive use of both marks from the 1980s onwards in relation to computers, computer accessories and computer services.

The applicant also claimed use from 1986 but such use as occurred was of a different apple device, as compared to that applied for, and was always in conjunction with the word DENPLAN. The applicant, therefore, had no prior use of the mark applied for.

The opponent claimed bad faith on the part of the applicant but filed no hard evidence to support this allegation. The Hearing Officer accepted that the applicant had used an apple device for a number of years and accepted at face value the applicant’s view that its mark was different and distinguishable from the opponent’s marks. Opposition failed on this ground.

Under Section 5(2)(b) the Hearing Officer had little difficulty in deciding that the respective marks were very similar and that identical and similar services were at issue. He, therefore, proposed a restriction of the applicant’s application in Classes 35, 36, 41 and 42. The application could proceed if the applicant restricted its application as proposed.

The Hearing Officer went on to find that the opponent was in no better position under Sections 5(3) and 5(4)(a) as compared to Section 5(2)(b). These grounds thus failed in respect of the limited services allowed under Section 5(2)(b).

Full decision O/328/04 426Kb