Trade mark decision
- BL Number
- O/514/01
- Decision date
- 20 November 2001
- Hearing Officer
- Dr W J Trott
- Mark
- INDIAN MOTORCYCLE
- Classes
- 03, 06, 08, 09, 11, 14, 16, 20, 21, 26, 27, 28, 32, 33, 34, 42
- Applicant
- Didier Vuillemin & Roger Alfaro
- Opponent
- IMOCA Licensing America Incorporated
- Opposition
- Sections 5(2)(a), (b), 5(3) & 5(4)(a)
Result
Section 5(2)(a) - Opposition partially successful in respect of Class 14
Section 5(2)(b) - Opposition failed
Section 5(3) - Opposition failed
Section 5(4)(a) - Opposition failed
Points Of Interest
- The applicant’s submissions at the hearing were in the nature of evidence and the Hearing Officer had to disregard such submissions.
Summary
The opponents opposition was based on their ownership of registrations and prior applications for the mark INDIAN MOTORCYCLE in Classes 9, 14, 18 and 25 and a prior application for a Community Trade Mark for the word INDIAN and a device of an Indians head with headdress in Classes 4, 12, 32, 33, 34 and 42. Use was claimed in respect of both marks and also the device with the words INDIAN MOTORCYCLE but the Hearing Officer found such use as was proved was very modest and did not give rise to any relevant reputation. Also there was no evidence filed to establish that the mark INDIAN MOTORCYCLE was well known generally in the United Kingdom. Such a lack of reputation and goodwill proved fatal to the opponents grounds of opposition under Sections 5(3) and 5(4)(a) - Passing Off.
Under Section 5(2)(a) the Hearing Officer noted that the marks were identical and that in respect of Class 14 some similar goods were at issue.
Under Section 5(2)(b) the Hearing Officer found that identical and similar goods were at issue in Classes 32, 33, 34 and 42 but he considered the respective marks INDIAN MOTORTCYCLE and INDIAN and Indians head device to be different aurally, visually and conceptually. The respective marks were not therefore confusingly similar.
In summary the applicant could proceed for all the classes claimed with the exception of Class 14 where the specification claimed would have to be restricted.
Full decision O/514/01 
57Kb
