Trade mark decision

BL Number

O/376/04

Decision date

29 December 2004

Hearing Officer

Mr M Reynolds

Mark

OTTO

Classes

36

Applicant

OTTO Investments Holding S.A.

Opponent

OTTO Versand (GmbH & Co)

Opposition

Section 5(2)(b)

Result

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

Points Of Interest

• 1. None

Summary

The opponent in these proceedings owned a registration in Class 36 of the mark OTTO-OFFICE.COM and it claimed that the same and similar services were at issue and that the respective marks were confusingly similar. As regards this latter point it submitted that OFFICE.COM would be seen as merely descriptive of the means of providing the services on offer and that the distinctive element in its mark was OTTO.

In its counterstatement the applicant denied that the same or similar services were at issue but its submissions concentrated on the differences in the respective marks. It did not rebut the detailed submissions of the opponent regarding the similarity of the respective services.

The Hearing Officer compared the respective services at issue and quickly concluded that many of the respective services were identical or very similar. In comparing the respective marks the Hearing Officer accepted the view of the opponent that OTTO was the distinctive element in its mark and that the words OFFICE.COM were likely to be seen by the relevant public as the means by which the opponent would deliver its services ie via the internet. Overall the Hearing Officer considered the respective marks to be very similar and as identical services are at issue there was a real likelihood of confusion of the public. Opposition thus succeeded under Section 5(2)(b).

Full decision O/376/04 29Kb