Trade mark decision
- BL Number
- Decision date
- 7 January 2004
- Hearing Officer
- Dr W J Trott
- REPORT COLLECTION
- 03, 14, 18, 25
- Muller & Eilbracht B.V.
- FIN.ING. S.R.L.
- Section 5(2)(b)* (*Sections 5(3) and 5(4)(a) were also included in the pleadings but withdrawn just before the hearing).
Section 5(2)(b) - Opposition partially successful
Points Of Interest
- 1. Comparison of the marks REPORTER v REPORT COLLECTION
The opposition was based on registrations and applications for registration of marks consisting of or incorporating the word REPORTER. The Hearing Officer stated that the opponent’s best case would be that based on their marks comprising the word REPORTER solus. The 'collection' part of the mark applied for was, in the Hearing Officer’s view, likely to be taken as descriptive, its effect as a 'difference' element between the marks was thus reduced and, in the case of clothing, ‘pretty much non-existent’. The comparison was therefore between REPORT and REPORTER. There was a fair degree of similarity between these marks, he noted.
Comparing the goods, the Hearing Officer found no similarity in any of the goods in Class 34 of the specification.
There was similarity in some of the goods in Classes 14 and 18, whilst the Class 25 goods were the same or similar. In the result, the opposition failed in respect of the Class 3 goods, succeeded in respect of the Class 25 goods and succeeded, provisionally in respect of Classes 14 and 18. The final outcome in the case of Classes 14 and 18 would depend on the eventual fate of the opponent’s CTM applications and would be the subject of a further decision.
The Hearing Officer stated that he would deal with the matter of costs in that further decision; the costs order would reflect the lateness of the concessions in the matter of Sections 5(3) and 5(4)(a), he stated.
Full decision O/007/04 64Kb