Trade mark decision

BL Number

O/455/00

Decision date

22 September 2000

Appointed Person

Mr S Thorley QC

Mark

LOADED

Classes

25

Applicants/Respondents

Valucci Designs Limited t/a Hugo Hog’s

Opponents/Appellants

IPC Magazines Limited

Opposition

Appeal to the Appointed Person in Opposition Proceedings

Result

Section 3(6) - Appeal failed

Section 5(3) - Appeal successful

Points Of Interest

• 1. 'Inhibition' a factor in detriment.

Summary

At first instance (see BL O/009/00) the Hearing Officer had found the opposition to have failed on all points. The opponents appealed; they maintained their oppositions under Sections 5(3) and 3(6).

Under Section 5(3) the Appointed Person found that the matter came down to the issues of reputation and unfair advantage.

For these, he decided, the burden of proof lay on the opponents, quoting AUDI-MED trade mark [1998] RPC 863 with approval.

Turning to an item in the evidence of reputation the Appointed Person found that it supported a claim to considerable reputation at the relevant date, contrary to the findings of the Hearing Officer who had dismissed the matter because it was written after the relevant date although it confirmed an earlier reputation.

The Appointed Person then considered the matter of detriment/unfair advantage.

'Origin confusion', he decided, had not been proved on the facts of the case. He had to consider the extent to which there would be an association and then consider the extent to which that association could lead to detriment or unfair advantage. The trade marks being the same, the possibility of association was manifest. Before the Appointed Person it was contended that there would be dilution, blurring, tarnishing and inhibition, this latter being a new category. Use of clothing in promotion would be fettered and hence there would be detriment. Registration of the mark applied for could also affect the decisions of advertisers in the magazine.

This was a ‘borderline case’ but on balance the Appointed Person found that there would be detriment to the earlier mark.

The Section 3(6) ground failed, however, as it had in the earlier decision.

In the result the appeal was successful under Section 5(3).

Full decision O/455/00 60Kb