Trade mark decision

BL Number
O/436/01
Decision date
4 October 2001
Hearing Officer
Mr J MacGillivray
Mark
EURO GUARD
Classes
06
Applicant for Invalidity
Group 4 Total Security Limited
Opponent
H J Jackson & Son (Fencing) Limited
Opposition
Section 47(2)(a) & Sections 5(2)(b), 5(3) & 5(4)(a)

Result

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

Section 5(3): - Invalidation failed.

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

Points Of Interest

  • Evidence in Passing Off cases. It is clear that in most instances mere evidence of use will be insufficient to successfully mount a Passing Off action. There is a need for evidence to show that the opponents reputation extends to the goods included within the applicants specification; evidence as to the manner in which the goods are traded etc. Section 5(4)(a) is very different as compared to Section 11 of the Trade Marks Act 1938.

Summary

The opponents owned three registered marks in Class 42 - EUROGUARD, EUROGUARD SCOTGUARD and EUROGUARD WELSHGUARD - in respect of store detectives, store surveillance services and monitoring of security alarm systems - and they filed details of extensive use of these marks from 1986 onwards. The Hearing Officer accepted that at the relevant date they had a reputation in the mark EUROGUARD for at least some of the services listed. The applicants mark was registered as from 12 August 1996, in respect of metal fencing, traffic barriers, guard rails etc. There had been modest use from that date and no incidents of confusion had arisen.

Under Section 5(2)(b) the Hearing Officer accepted that the respective marks were very similar but having applied the usual tests, concluded that the respective goods and services were not similar. No evidence had been filed to show how confusion might arise between the respective goods and services. Invalidation failed on this ground. Again it was this lack of specific and detailed evidence about the nature of the respective security sectors which led the Hearing Officer to conclude that the applicants also failed in their grounds under Sections 5(3) and 5(4)(a).

Full decision O/436/01 PDF document29Kb