Trade mark decision

BL Number
O/342/02
Decision date
16 August 2002
Hearing Officer
Mr M Foley
Mark
ORANGE FUTURE TALK
Classes
09, 35, 38, 42
Applicants
Orange Personal Communications Services Ltd
Opponents
British Telecommunications Plc
Opposition
Section 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 opponents stated that they adopted the mark FUTURE TALK in 1998 in connection with their millennium campaign; that it had been used extensively at their stand in the Millennium Dome and there had been further use on a website and in a report to 1.8 million shareholders in February 1999. They have an earlier application for the mark BT FUTURETALK in Classes 9, 16 & 35.

The opponents also claimed to have spent extensive sums of money in advertising the mark FUTURETALK and BT FUTURETALK but such information was not precise or detailed.

The applicants’ application was filed on 2 March 1999 and there has been an on-going dispute between the parties. The applicants say that the element FUTURETALK is not distinctive and they have entered a disclaimer to exclusive rights in that word.

Under Section 3(6) the opponents ground was based, at least partially, on the premise that as the applicants had given the opponents an undertaking not to use their mark in the UK, they could have no intention to use their mark in relation to the goods and services claimed. However, that undertaking was a result of the dispute between the two parties and could be withdrawn at any time. In these circumstances the Hearing Officer decided that such agreement did not affect the applicants intention to use their mark.

Under Section 5(2)(b) the Hearing Officer considered the distinctiveness of the FUTURETALK element of the respective marks against the criteria set down in Section 3 of the Act. In his view this element is in fact distinctive and the fact that the applicants had entered a disclaimer on their application was not a factor in his comparison of the two marks. The Hearing Officer went on to find that the marks BT FUTURETALK and ORANGE FUTURETALK were confusingly similar where identical and similar goods and services were at issue. The opponents thus succeeded on this ground in respect of Class 35 and some goods in Class 9.

The opponents grounds under Sections 5(3) and 5(4)(a) failed because the opponents were unable to show that they had a goodwill and reputation in the mark FUTURETALK at the relevant date in relation to the goods and services claimed. There was, therefore, little likelihood of the opponents suffering loss of reputation or damage, if the applicants used their mark.

Full decision O/342/02 PDF document61Kb