Trade mark decision
- BL Number
- O/422/01
- Decision date
- 26 September 2001
- Hearing Officer
- Mr M Reynolds
- Mark
- SPECTACULAR BY SPECTACULAR COSMETICS
- Classes
- 03, 18, 20, 21
- Applicant
- Orchard Trading Limited
- Opponent
- Helena Rubinstein
- Opposition
- Sections 3(1)(a), (b), (c) & (d), 5(2)(b) & 5(4)(a)
Result
Section 3(1)(a), (b), (c) & (d): - Opposition failed.
Section 5(2)(b): - Opposition failed.
Section 5(4)(a): - Opposition failed.
Points Of Interest
- If a party wishes to claim that an element in a composite mark serves as an indication of origin, then it is necessary to file particular evidence to support such claim. Mere evidence of use of the composite mark is likely to be insufficient.
Summary
The opponents opposition was based on their ownership of a registration for the mark HR(elided), HELENA RUBINSTEIN SPECTACULAR and use of that mark. They also claimed that the word SPECTACULAR was not registrable.
Under Section 3 the Hearing Officer accepted that as the word SPECTACULAR is a well known dictionary word with a laudatory meaning it had little distinctiveness as an unused mark. However, the mark applied for was a combination of elements and the Hearing Officer concluded that it had a capacity to distinguish. Opposition thus failed on the Section 3 ground.
Under Section 5(2)(b) the opponents objections related only to the applicants application in Class 3, where identical and similar goods are at issue. In comparing the respective mark the Hearing Officer noted that the only common feature is the word SPECTACULAR and that it is a weakly distinctive element. In contrast he noted the strength of the opponents HR and HELENA RUBINSTEIN elements and concluded that there was little likelihood of confusion.
With regard to Section 5(4)(a) - Passing Off - the Hearing Officer accepted that there had been extensive use of the opponents mark but the nature of that use did not convince him that the word SPECTACULAR would be seen other than as descriptive and/or laudatory rather than as an indication of origin. The Section 5(4)(a) case thus failed.
Full decision O/422/01 
44Kb
