Trade mark decision

BL Number

O/516/01

Decision date

16 November 2001

Hearing Officer

Mr D Landau

Mark

PERKINS

Classes

08, 09, 11, 14, 16, 18, 20, 21, 25, 26, 28

Applicant

Perkins Holdings Ltd

Opponent

Dorothy Perkins Retail Limited

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b) - Opposition partially successful

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition partially successful

Points Of Interest

• None.

Summary

The opponents opposition was based on their ownership of registrations for the mark DOROTHY PERKINS in Classes 3, 9, 14, 18, 23 and 25. The opponents also claimed a reputation in their mark DOROTHY PERKINS but the evidence filed was somewhat ambiguous and the Hearing officer did not accept that the opponents had a reputation outside their core business of ladies clothing.

The applicants application had proceeded on the basis of "honest concurrent use" but on closer examination the user shown had been of a promotional nature and the goods were only distributed through the applicants own outlets. The lack of confusion claimed did not, therefore, assist the applicants.

Under Section 5(2)(b) the Hearing Officer determined that in the case of Classes 14, 16 18, 21 and 26 the same goods and similar goods were at issue and went on to compare the respective marks. DOROTHY PERKINS and PERKINS. The Hearing Officer considered PERKINS to be a distinctive element in the mark DOROTHY PERKINS and that conceptually both marks had personal name and surname significance. In his view there was a real possibility of confusion arising from imperfect recollection or an assumption of linked undertakings.

With regard to Section 5(3) the Hearing did not believe that the opponents had proved a widespread reputation but, even on the assumption that they had, he believed that the differences in the respective marks in relation to non-similar goods, must means that use by the applicants of their mark would not be taking unfair advantages or be detrimental to the opponents trade mark.

Under Section 5(4)(a) - Passing Off - The Hearing Officer found that the opponents were in no better position than under Section 5(2)(b) in relation to the identical and similar goods highlighted in that ground of opposition. Because of the opponents lack of a general reputation and good will and because of the difference in the respective marks, the Hearing Officer found that the opponents failed in this ground in relation to non-similar goods.

Full decision O/516/01 85Kb