Trade mark decision

BL Number
O/364/01
Decision date
17 August 2001
Hearing Officer
Dr W J Trott
Mark
CANON
Classes
09
Applicant
Canon Kabushiki Kaisha
Opponent
Metro Goldwyn Mayer Incorporated
Opposition
Sections 5(2)(b), 5(3), 56, 5(4)(a) & 3(6)

Result

Section 5(2)(b) - opposition partially failed

Section 5(3) - opposition failed

Section 56 - opposition failed

Section 5(4)(a) - opposition failed

Section 3(6) - opposition failed

Points Of Interest

  • None.

Summary

At the outset of his decision the Hearing Officer dealt briefly with the grounds under Section 5(3), 56 and 5(4)(a). He noted that the evidence filed by the opponents failed to establish that they had a reputation or goodwill in their mark CANNON in the UK. The opposition thus failed on these three grounds.

Under Section 5(2)(b), the Hearing Officer determined that the respective marks CANON and CANNON were very similar despite arguments that they were somewhat different visually and conceptually. He thus went on to compare the applicants goods as applied for in Class 9 with the opponents services as covered by their prior registration in Class 41. In particular the Hearing Officer compared the applicants “recording discs, video tapes, video disks, cinematographic apparatus, cinecameras and televisions” with the opponents services “Production, distribution and rental of cine-films and of video cassette tapes, production of television programmes and cinema services”. Having carefully analysed the likely conflict, the Hearing Officer decided that the opposition succeeded to the extent that the applicants must delete video tapes from their specification before the application would be allowed to proceed.

With regard to the ground under Section 3(6), this related to the width of the applicants specification. In view of the applications size and their range of products the Hearing Officer decided that the specification claimed was not unduly broad. Opposition failed on this ground.

Full decision O/364/01 PDF document31Kb