Trade mark decision
- BL Number
- O/352/07
- Decision date
- 29 November 2007
- Hearing Officer
- Mr D Landau
- Mark
- BUDMEN & Geometric device
- Classes
- 18, 25
- Applicant
- Jose Alejandro SL
- Opponent
- Nike International Ltd
- Opposition
- Sections 5(2)(b), 5(3) & 5(4)(a)
Result
Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed.
Points Of Interest
- The opponent also claimed that its device mark “is a well known mark” but as it has registrations of this mark for identical and similar goods, such a claim did not advance its case.
Summary
The opponent owns a number of marks consisting of the word NIKE and swoosh device and of the swoosh device (SOLOS) in a number of Classes including Classes 18 and 25 and the Hearing Officer established that identical and similar goods are at issue. The opponent also filed evidence to show that its NIKE and swoosh device marks (sometimes referred to as a tick) are well known trade marks in the United Kingdom.
The applicant filed “state of the register” evidence and referred to decisions in other jurisdictions but the Hearing Officer dismissed this evidence as being of no assistance.
Under Section 5(2)(b) the Hearing Officer determined the range of identical and similar goods and he also decided that the opponent’s best case resided in its device registrations. In comparing the respective marks the Hearing Officer believed that the device element of the applicant’s mark would not be identified as a swoosh or tick and therefore there would be no oral confusion and he did not believe there was visual confusion because the respective devices created different visual impacts. Also the applicant’s mark had the additional element BUDMEN. The Hearing Officer concluded that overall the respective marks were not confusingly similar and that opposition failed on the Section 5(2)(b) ground.
The opposition also failed on the Section 5(3) and 5(4)(a) grounds because the Hearing Officer was of the view that the respective marks were not sufficiently similar for the public to make a link between the marks and thus there would be no deception or confusion.
Full decision O/352/07 
267Kb
