Trade mark decision

BL Number
Decision date
12 December 2001
Hearing Officer
Mr D Landau
18, 25, 41
Viacom International Inc
The British Broadcasting Corporation
Section 5(4)(a)


Section 5(4)(a) - Opposition partially successful

Points Of Interest

  • 1. Claim to increased protection by reason of potential of merchandising use
  • 2. Costs to applicants in view of the breadth of the opponents’ attack


On a preliminary point, the Hearing Officer decided, not without ‘some misgivings’ to take into account some exhibits which had not been copied to the other side.

In the substantive matter, the opponent claimed to have established a goodwill in the mark BITESIZE. After a careful examination of this claim, however, the Hearing Officer considered any possible damage was limited to a common field of activity, ie some, only, of the services in the Class 41 specifications.

He ordered that the Class 41 specification be reduced accordingly. Since this was only a very limited success, given the breadth of the opponents’ attack, the Hearing Officer made an award of costs to the applicants.

Full decision O/553/01 PDF document50Kb