Trade mark decision

BL Number

O/551/01

Decision date

10 December 2001

Hearing Officer

Mr J MacGillivray

Mark

M

Classes

07, 09, 11, 12, 16, 39, 42

Applicant

Multipart Distribution Limited

Opponent

Bayerische Motoren Werke AG

Opposition

Sections 3(3)(b); 5(2)(b); 5(3); 5(4)(a) & 56

Result

Section 3(3)(b) - Opposition dismissed

Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Section 56 - Opposition failed

Points Of Interest

• 1. Pumfrey J’s guidance on Section 5(4)(a) v Section 11 of the 1938 Act followed.

Summary

At the outset the Hearing Officer dismissed the Section 3(3)(b) as it sought to invoke an absolute ground to deal with a relative problem. Under Section 5(2)(b) he took account of the opponents’ marks M TEAM, BMW M POWER, M TECHNIC, and a device mark which incorporated the letter M. He rejected a submission that they be considered collectively, since the letter M was common to all these marks it would link them together in the mind of the public. In this he followed the guidance of the Appointed Person in a recent decision (BL O/411/01). On a ‘global’ appreciation of the marks he found no likelihood of confusion and the attack under Section 5(2) therefore failed. The opponents had no reputation in the UK in these marks and hence the attack under Section 5(3) failed also. After a careful analysis of the relevant factors he also found that the case under Section 5(4)(a) had not been made out following Pumfrey J’s remarks that "the requirements of the (Section 5(4)(a)) objection are considerably more stringent than the enquiry under Section 11 of the 1938 Act: Finally, he found that the opponents had not demonstrated the necessary reputation of the mark, and the Section 56 ground failed also.

Full decision O/551/01 181Kb