Trade mark decision

BL Number

O/346/01

Decision date

9 August 2001

Hearing Officer

Mr M Knight

Mark

FUNDERBRA

Classes

25

Applicant

Milords International Limited

Opponent

Canadelle Limited Partnership

Opposition

Section 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b) - Opposition succeeded

Section 5(4)(a) - Opposition succeeded

Points Of Interest

• None.

Summary

The opponents opposition was based on their ownership of registrations for the mark WONDERBRA (and variations thereof) and substantial use of that mark. In his comparison of the respective marks the Hearing Officer accepted that the opponents had a significant reputation in their mark. With regard to that comparison under Section 5(2)(b) the Hearing Officer noted that the prefixes FUN and WONDER were ordinary dictionary words with their own distinct meaning but even so, he considered there was some visual similarities and that they were close aurally. Taking into account the opponents reputation in their mark he concluded that there was a likelihood of confusion between the two marks. While identical goods (brassieres) were at issue here the Hearing Officer determined that the confusion would occur in relation to other items of underwear and that the application should be refused in its entirety.

Under Section 5(4)(a) - Passing Off - the Hearing Officer noted the opponents significant reputation in their mark WONDERBRA, his finding regarding confusion under Section 5(2) and concluded that if the applicants continued to use their mark, the opponents would suffer damage. Opposition successful on this ground.

Full decision O/346/01 20Kb