Trade mark decision

BL Number
Decision date
23 December 2005
Hearing Officer
Mr M Reynolds
VOV Cosmetics Co Ltd
Alberto-Culver Company
Sections 5(2)(b), 5(3) & 5(4)(a)


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

Section 5(3): - Opposition failed.

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

Points Of Interest

  • 1. None.


The opponent based its opposition on ownership of a number of VO5 marks in Class 3 and also registrations for the mark ALBERTO VO5 in the same class. The respective specifications of both parties indicated hair care preparations, so identical goods were at issue. As regards the other goods the Hearing Officer decided that there was graduations of similarity, which in the end did not impact on the outcome of the proceedings.

The opponent also filed details of use of its marks and provided turnover figures showing extensive use in excess of £30m per annum. The supporting documentation, however, was not well focused in distinguishing between the various marks and most of it was dated after the relevant date. The Hearing Officer was unable to conclude that the opponent's mark VO5 (solus) had an enhanced reputation though he accepted that this might be the case.

The applicant denied that there was any likelihood of confusion and stated that it had been successful in proceedings involving this opponent in Japan, Iran and Russia.

Under Section 5(2)(b) the Hearing Officer noted that identical and similar goods were at issue and went on to compare the respective marks VOV (stylised) and VO5. The opponent submitted that the respective marks were very close since consumers might well see the final V in VOV as a Roman numeral 5 and thus make a connection with VO5. The Hearing Officer rejected this argument since the block stylisation of VOV meant that it was unlikely to be seen as anything other than the letters VOV. While VOV and VO5 have some similarity because of the common letters VO the Hearing Officer concluded the terminations, the letter V and the numeral 5, were very different and in short marks this difference was significant. Overall the Hearing Officer concluded that the respective marks were not confusingly similar. The difference was more pronounced when comparing VOV (stylised) and ALBERTO VO5.

The opponent also failed in its grounds under Sections 5(3) and 5(4)(a) because of the finding above that the respective marks were not confusingly similar and the evidence filed by the opponent was not persuasive.

Full decision O/334/05 PDF document68Kb