Trade mark decision

BL Number
O/552/01
Decision date
11 December 2001
Hearing Officer
Mr J MacGillivray
Mark
FREE 2 TALK
Classes
35
Applicant
Freedom Telecom (UK) Ltd
Opponent
Mercury Personal Communications
Opposition
Sections 3(6), 5(2)(b) & 5(4)(a)

Result

Section 3(6).. - Opposition failed

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None

Summary

The opponents opposition was based on their ownership of a number of registrations for the mark ONE 2 ONE (and variations thereof) in Classes 9, 16, 35 and 38. They also claimed an extensive reputation in the mark ONE 2 ONE and also that the numeral '2' was associated with their company. The opponents filed survey evidence to substantiate this latter claim but achieved only some 3% support for such a claim.

Under Section 5(2)(b) the Hearing Officer applied the usual tests and decided that similar services were at issue. He decided however that, not withstanding the results from the survey, that the respective marks ONE 2 ONE and FREEDOM 2 TALK and device were not visually, aurally or conceptionally similar. The opposition thus failed on this ground.

As the Hearing Officer had decided that the respective marks were not similar he concluded that under Section 5(4)(a) - Passing Off - there would be no misrepresentation.

Under Section 3(6) the Hearing Officer determined that a mere knowledge by the applicants of the opponents’ marks prior to filing was insufficient to constitute bad faith, particularly as he had concluded that the respective marks were not similar.

Full decision O/552/01 PDF document323Kb