Trade mark decision

BL Number
O/346/02
Decision date
15 August 2002
Hearing Officer
Mr S P Rowan
Mark
LEONARDO
Classes
16, 35, 42
Applicants
Leonardo Internet Limited
Opponents
Hermstedt AG
Opposition
Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None

Summary

The opponents opposition was based on their ownership of a registration of the mark LEONARDO in Class 9 for various goods. In particular they claimed use of their mark in respect of ISDN cards for insertion in computers which they claimed were similar to services claimed by the applicant in Class 42 - in particular "creating and maintaining web sites; hosting the web sites of others".

The opponents period of use prior to the relevant date was only two years and both turnover and advertising were modest. In addition the evidence was not particularly well focussed in showing what reputation the opponents had in their mark at the relevant date as some of the advertising referred to was not linked to the mark at issue or was after the relevant date. The Hearing Officer concluded that the opponents had no enhanced reputation in their mark at the relevant date but he noted that LEONARDO was a mark with a high level of distinctiveness.

Under Section 5(2)(b) the only matter to be considered was a comparison of the opponents’ goods with the applicants services since the marks at issue are identical. After applying the usual tests and considering the specialist nature of the respective goods and services, the Hearing Officer concluded that they were not similar and that the opponents failed on this ground.

The opponents also failed under Section 5(4)(a) - Passing Off - since they had failed to show that they had a reputation and goodwill in their mark at the relevant date.

Full decision O/346/02 PDF document32Kb