Trade mark decision

BL Number
O/535/01
Decision date
4 December 2001
Hearing Officer
Mr M Foley
Mark
EXPERT SOFTWARE
Classes
09
Applicant
Expert Software Inc
Opponent
Transworld Publishers Limited
Opposition
Sections 3(1)(b); 3(1)(c); 3(1)(d); 5(2)(b) & 5(4)(a)

Result

Section 3(1)(b) - Opposition successful

Section 3(1)(c) - Opposition successful

Section 3(1)(d) - Opposition failed

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

Section 5(4)(a) - No formal finding

Points Of Interest

  • 1. "Reference books related to gardening, plants and home making should be regarded as similar goods to computer software of the same ilk for household use"

Summary

The opponents sought a reduction in the specification of goods, in the light of their registration of EXPERT in Class 16. The Hearing Officer found that the mark applied for offended against the provisions of Section 3(1)(c) and must be refused. He went on to consider the matter under Section 5(2)(b), where he found a likelihood of confusion, but only in respect of "computer softwarerelating to gardening and lifestyle". He made no formal finding under Section 5(4)(a).

Full decision O/535/01 PDF document141Kb