Trade mark decision

BL Number
Decision date
17 December 2008
Hearing Officer
Mr A James
09, 35
Applicant for Invalidation
NE Services Limited
Registered Proprietor
Marketplace Limited
Section 47(1) & (2) based on Section 3(1)(b), (c) & (d) and Section 5(4)(a)


Section 3(1)(b), (c) & (d): Opposition partially successful. Section 5(4)(a): Opposition failed.

Points Of Interest

  • 1. Decision requires careful reading as the conflict is quite complex and the Hearing Officer’s decision very detailed.
  • 2. Cross-examination of declarants at hearing.


The opponent’s opposition was based on a claim that the marks in suit lacked distinctive character and were thus registered contrary to the requirement of Section 3(1)(b), (c) and (d). It also claimed prior use of its own mark PASSION 8 and thus registration of the marks in suit were registered contrary to Section 5(4)(a).

Both parties filed evidence of use of both marks. The applicant claimed use of its mark PASSION8 from 1995 and provided details of modest use, with other marks, in subsequent years in respect of identical and similar goods as those covered by the registered marks, namely adult sex toys and similar goods. The registered proprietor commenced to use its marks in 1999 and provided details of turnover and advertising for the years 2003 to 2006. It apparently has a more extensive business than that of the applicant.

Under Section 3 the Hearing Officer noted the descriptive nature of the word PASSION and went on to conclude that the marks in suit lacked distinctive character in relation to most of the goods and all of the services at issue. The Hearing Officer highlighted the goods to which objection did not apply and referred to these as “the surviving goods”. The application for invalidity was filed in July 2006 and the Hearing Officer considered whether or not the marks in suit had become distinctive, because of the use made of them, in relation to the retail services in class 35. The Hearing Officer decided not because of the modest nature of the evidence. Thus the applicant was successful on the Section 3 ground except in relation to “the surviving goods”.

With regard to the Section 5(4)(a) ground the Hearing Officer decided that the applicant had acquired passing off rights at the date of application for registration of the marks in suit (March and May 2002). However, because of the descriptive nature of the marks in suit the applicant must fail in relation to “the objectionable goods and services”. However, the Hearing Officer went on to say that if he was found to be wrong as regards the descriptive nature of the marks in suit and they were found to be distinctive, then the applicant would succeed on the Section 5(4) ground as the respective marks were very similar and there was a likelihood of deception. The ground under this section failed in respect of “the surviving goods”.

Full decision O/332/08 PDF document208Kb