Trade mark decision

BL Number
Decision date
30 September 2002
Hearing Officer
Dr W J Trott
09, 37, 38
Yorkshire Co-operatives Limited
Sun Microsystems Inc
Sections 3(6), 5(2)(b, 5(3) & 5(4)(a)


Section 3(6): - Opposition failed.

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

Section 5(3): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest

  • The applicants had made some concessions in their counterstatement and it was argued by the opponents at the hearing, that they were adopting a different approach at the hearing. The Hearing Officer determined that the applicants concessions were not as broad as claimed by the opponents but said he would bear them in mind in making his decision.


The opponents opposition was based on their ownership of registrations for the marks SUN, SUN MICROSYSTEMS and many other SUN+ marks in Classes 9, 37, 38 etc. They also claimed a reputation in their SUN marks and to have a family of SUN marks. Their evidence, however, established only use of SUN and SUN MICROSYSTEMS in relation to a range of computer systems and operating systems and did not support their claim to a family of marks.

The applicants claimed "honest concurrent use" but their evidence was sketchy and inconclusive and did not support such a claim.

The opponents ground under Section 3(6) was based on a claim that the applicants did not intend to use their mark on all the goods and services claimed. However, they filed no evidence to support their claims and the Hearing Officer decided that they must fail on this ground.

As regards the ground under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and that the opponents had a reputation in their marks. The opponents suggested that the WIN element of the applicants mark would be seen as a shortened version of the word "WINDOWS" and thus increase the risk of confusion, but no evidence or examples of such use were filed to support this claim. The Hearing Officer thus decided to compare the applicants' SUNWIN mark with the opponent's SUN and SUN MICROSYSTEMS marks on a normal basis. The Hearing Officer considered that the two elements of the applicants mark SUN and WIN combined to produce a fancy mark with perhaps an Eastern or Japanese intimation. Thus it was different from the opponents' SUN marks and likely to be seen as such. In short he considered the marks not to be confusingly similar and that the opponents failed on this ground.

In the light of his finding under Section 5(2) that the respective marks were not confusingly similar the grounds under Sections 5(3) and 5(4)(a) were dealt with only briefly. The opponents also failed on those grounds.

Full decision O/396/02 PDF document100Kb