Trade mark decision

BL Number
O/396/01
Decision date
10 September 2001
Hearing Officer
Mr J MacGillivray
Mark
WANNABEE
Classes
09, 12, 18, 24, 28
Applicant
Go Sport SA
Opponent
Calzaturifico Ruggeri & Pagnanini SpA
Opposition
Sections 5(2), 5(3) & 5(4)(a)

Result

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

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition successful against Class 25. Opposition failed against other classes.

Points Of Interest

  • None

Summary

The opponents opposition was based on their ownership of a registration for ladies footwear in Class 25 for the mark WANNABE and use of the mark PATRICK COX WANNABE on other items of clothing in Class 25, leather goods in Class 18 and sunglasses in Class 9.

Under Section 5(4)(a) - Passing Off - the Hearing Officer noted the opponents evidence supported their claim to a reputation in the mark WANNABE in relation to articles of clothing within Class 25 and he found the opponents to be successful in relation to the applicants Class 25 application. However, the evidence in relation to leather goods in Class 18 and sunglasses in Class 9 was not persuasive and the Hearing Officer concluded that the opponents failed in relation to the applicants other classes. A similar decision, albeit for different reasons, was reached in relation to the Section 5(3) ground.

With regard to Section 5(2)(b) the Hearing Officer noted that the respective marks were essentially identical. In view of the decision reached under Section 5(4)(a) the Hearing Officer decided there was no need to re-consider Class 25 and he only considered the similarity of goods between clothing in Class 25 and leather goods in Class 18. In relation to the goods at issued here, he found no similarity and thus the opponents failed on this ground in relation to the applicants Class 18 application.

Full decision O/396/01 PDF document50Kb