Trade mark decision

BL Number
O/548/01
Decision date
7 December 2001
Hearing Officer
Mr M Knight
Mark
D
Classes
25
Applicant
S T Dupont
Opponent
E.I. Du Pont De Nemours & Company
Opposition
Sections 11 & 12(3) of the Trade Marks Act 1938 (as amended)

Result

Sections 9 & 10 Opponents successful, Appeal allowed.

Section 11 Opponents successful, Appeal allowed.

Points Of Interest

  • 1. See also BL O/547/01 & O/548/01.

Summary

The opponents opposition under Section 12(3) was based on a prior application for the mark DU PONT in Class 25 in respect of the same and similar goods as those of the applicants. The ground under Section 11 was on the basis that the opponents had used their DU PONT mark from 1963 in relation to articles of clothing with turnover in 1993 amounting to £30m and promotion expenditure of some £2m. In use however, the DU PONT mark was used to indicate origin of the materials from which the clothing was made rather than origin of the clothing per se. In the proceedings the Hearing Officer stated that this use did not assist the opponents as the use of the DU PONT mark was at best ancillary and other marks were used to indicate origin of the articles of clothing.

The applicants also filed use of their mark ST DUPONT with turnover of some £86k before the relevant date. Attention was also drawn to the fact that the signature element of the mark in suit was already registered in respect of the goods applied for here.

The Hearing Officer considered the case presented by both parties and accepted that the opponents mark had been used in relation to fibres and fabrics for use in making articles of clothing and such goods were therefore goods of the same description as articles of clothing. Under Section 11 the dispute therefore rested on a comparison of the respective marks DU PONT and ST Dupont (signature) and script letter D. The Hearing Officer considered that the two marks were not similar since the applicants mark required analysis to establish that it was in fact a DUPONT mark and the letter D was also a distinguishing feature. As the marks were not similar the ground under Section 11 failed.

In view of his decision under Section 11 that the respective marks were not similar the Hearing Officer considered that there was no need to consider the matter under Section 12(3).

Additional Points

1. The opponents sought leave to file further evidence to show that they had used the script and normal print versions of their S T DUPONT mark. Leave was allowed.

2. The Judge accepted that only modest use was claimed but was satisfied that this was sufficient for Section 11 purposes.

3. The applicants use did not support a claim for the application of “Honest Concurrent Use” to counter the opponents success under Section 11.

Full decision O/548/01 PDF document36Kb