Trade mark decision

BL Number
O/546/01
Decision date
7 December 2001
Hearing Officer
Mr M Knight
Mark
S.T. DUPONT
Classes
25
Applicant
S T Dupont
Opponent
E.I. Du Pont De Nemours & Company
Opposition
Sections 5(2)(b), 5(4)(a) & Section 56

Result

Section 5(2)(b) - Opposition succeeded

Section 5(4)(a) - Opposition failed

Section 56 - Opposition failed

Points Of Interest

  • None

Summary

The opponents' opposition was based on their prior application for the mark DU PONT in Class 25 in respect of identical goods for which the applicant has claimed protection. The opponents claimed significant use and reputation in relation to such goods but the evidence showed that they are in fact a producer of products, with particular characteristics, for use in the making of articles of clothing. Thus while clothing may carry the DU PONT mark it will be in the context that the clothing is made from or contains their product and the DU PONT mark will refer to that product rather than be the mark under which the articles of clothing are sold. In such circumstances the Hearing Officer did not accept that the opponents had a reputation or goodwill in their mark in relation to clothing. The applicants had also claimed use of their mark but this was not confirmed by their evidence.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks S T Dupont (stylised) and DU PONT. He considered that DUPONT was the dominant element in the applicants mark and as this element was essentially the same as the opponents mark, he quickly reached the view that they were confusingly similar and that there was a likelihood of confusion of the public. Opposition succeeded on this ground.

The grounds under Section 5(4)(a) - Passing Off - and Section 56 were dealt with only briefly since the Hearing Officer decided that the opponents had no reputation or goodwill to pursue their case under Section 5(4)(a) and that they had provided insufficient evidence to prove that DU PONT was a well known mark and thus entitled to exceptional protection.

Full decision O/546/01 PDF document38Kb