Trade mark decision

BL Number
O/351/00
Decision date
21 September 2000
Hearing Officer
Dr W J Trott
Mark
TOD'S
Classes
25
Applicant
EMA Srl
Opponent
Pod Trademarks Partnership
Opposition
Sections 5(2) & 5(4)(a)

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None

Summary

The opponents claimed use of their mark POD from 1997 and they have a number of POD + variations thereon registered. The applicants claimed user from 1985 but much of the supporting documentation was updated.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks TOD’S COMPETITION and POD. He decided that the difference in the initial letter of the words TOD’s and POD was significant and that the presence of the word COMPETITION would reduce further the likelihood of confusion.

With regard to Section 5(4)(a) - Passing Off - the Hearing Officer considered that the evidence provided by the opponents was insufficient to justify a finding that they had a protectable goodwill. Even if he had made such a finding the Hearing Officer decided that as he had found the marks not confusingly similar, no misrepresentation would occur.

Full decision O/351/00 PDF document39Kb