Trade mark decision
- BL Number
- O/366/07
- Decision date
- 17 December 2007
- Hearing Officer
- Mr M Reynolds
- Mark
- SIN & SLIM & device
- Classes
- 16, 29, 30, 41
- Applicant
- A Different Limited
- Opponent
- Miles-Bramwell Executive Services Ltd
- Opposition
- Sections 5(1), 5(2)(b), 5(3) & 5(4)(a)
Result
Section 5(1): Opposition failed. Section 5(2)(b): Opposition successful. Section 5(3): Not considered. Section 5(4)(a): Not considered.
Points Of Interest
- See also decision dated 17 December 2007 (BL O/367/07) relating to revocation and invalidity proceedings.
Summary
The opponent relied upon two registrations of the mark SIN. The first is registered in the UK in Classes 16, 29, 30, 32, 41 and 42 and the second is a CTM registration in Classes 16, 41 and 42. It was not disputed that identical and similar goods and services are at issue.
In separate proceedings the Hearing Officer refused an application by this applicant to revoke and invalidate the UK registration of the mark SIN by the opponent in these proceedings (BL O/367/07).
The opponent trades as Slimming world and is one of the UK’s leading weight control and dietary organisations. It trades through a network of some 2,500 trained consultants who hold around 5,500 weekly slimming and weight control meetings for members.
The opponent filed evidence of use of its mark SIN to show that it enables customers to identify the relative “healthiness” of foods. The less healthy a foodstuff the higher the SIN value attributed to that foodstuff and vice versa. The opponent explained that the mark has been used for some 30 years in association with its diet and weight control programmes as promoted and advertised in its magazine Slimming World which is published every two months and has a circulation of over 200,000 copies. Advertising and promotion spend has increased over the years to over £1m and its agents/consultants are said to spend a further sum of some £2m per annum. A questionnaire completed by a number of the opponent’s consultants showed, not surprisingly, that they associated the term SIN with the opponent.
The applicant also filed evidence from the internet to show that the word SIN is widely used in relation to a range of goods and services and it also submitted that use by the opponent was not trade mark use of its mark.
The ground under Section 5(1)(a) was dismissed as clearly the respective marks are not identical or nearly so.
Under Section 5(2)(b) the Hearing Officer considered the use of the mark SIN by the opponent. He concluded that while the use described and demonstrated was somewhat ambivalent in the context of trade mark use, it was a fact that the word is used in relation to the opponent’s goods and services and is closely associated with the opponent. It could not, therefore, be the case that such use was not trade mark use. The Hearing Officer went on to conclude that as the opponent’s mark SIN is used in relation to goods and services’ relating to slimming, it is confusingly similar to the applicant’s mark SIN & SLIM and opposition thus succeeded on the Section 5(2)(b) ground.
In view of his decision under Section 5(2)(b), the Hearing Officer saw no need to consider the grounds under Sections 5(3) & 5(4)(a).
Full decision O/366/07 
112Kb
