Trade mark decision

BL Number
Decision date
13 December 1999
Hearing Officer
Mr G Salthouse
18, 25
Veldhoven Clothing Holding AG
Yardley and Company Limited
Sections 3(3) and 5(4) Section 5(3)


Section 3(3)(b) - Ground dismissed.

Section 5(3) - Opposition failed: Insufficient reputation; respective marks not confusingly similar.

Section 5(4) - Opposition failed, same reasons.

Points Of Interest

  • Disclaimers: Under the 1994 Act the presence of disclaimers can impact on a comparison of the respective marks.


Essential ground of opposition under Section 5(3). The opponents registered mark in respect of Class 3 goods is SO....? and is subject to separate disclaimers of the word SO and the device of a question mark. The opponents evidence showed that they had only commenced to use their mark some four months prior to the date of the applicants application (the relevant date) and the Hearing Officer concluded that their mark was unlikely to have become known to a significant proportion of the relevant public outside their field of activity. Additionally the Hearing Officer went on to compare the respective mark and concluded that as SO is disclaimed in the opponents mark, the respective marks are not confusingly similar. In conclusion the Hearing Officer refers to the non-distinctive nature of the opponents mark (as indicated by the disclaimer) and decided that registration of the applicants mark would not take unfair advantage of, or be detrimental to, the opponents mark.

The opposition under Section 5(4) (passing-off) also failed because the opponents mark lacked distinctiveness and because the evidence filed by the opponents failed to confirm a significant reputation or likely damage.

Full decision O/441/99 PDF document38Kb