Trade mark decision

BL Number

O/374/03

Decision date

28 November 2003

Hearing Officer

Mr J MacGillivray

Mark

AMERICAN GOLF DISCOUNT

Classes

12, 25, 28

Applicant

American Golf Discount Centre Limited

Opponent

American Golf Corporation

Opposition

Sections 3(6) & 5(2)(b)

Result

Section 3(6): - Opposition failed.

Section 5(2)(b): - Opposition failed.

Points Of Interest

• 1. None

Summary

The opponent’s opposition was based on their ownership of two marks in Class 41 consisting, respectively of a device of a golf ball and the words AMERICAN GOLF CORPORATION (both elements disclaimed) and a device of a golf ball and the words AMERICAN GOLF and COUNTRY CLUBS (again each element disclaimed). The opponent had also successfully opposed an application by these applicants which consisted of a device of a golf ball and the words AMERICAN GOLF DISCOUNT (see BL O/196/01 Registry) and (BL O/024/02 Appointed Person).

Under Section 5(2)(b) the Hearing Officer confirmed the Hearing Officer’s decision in the previous proceedings that the opponents golf services were similar to the applicant’s golf goods. When comparing the respective marks AMERICAN GOLF DISCOUNT and AMERICAN GOLF CORPORATION and device the Hearing Officer noted that the words in the opponent’s mark were disclaimed. Bearing in mind the fact that both sets of wording were at the low end of distinctiveness; that the words in the opponent’s marks were disclaimed and taking account of the distinctive logo in the opponent’s mark, the Hearing Officer was satisfied that there was little risk of the public being confused. Opposition failed on this ground.

The opponent’s ground under Section 3(6) related to “intention to use”. The applicant submitted that they were retailers of a range of golf equipment and accessories. The mark had in fact been used in relation to some own-label items and it was the intention to extend this use. Opposition failed on this ground.

Full decision O/374/03 95Kb