Trade mark decision

BL Number
Decision date
5 September 2002
Hearing Officer
Mr A James
16, 35, 36
Friends Provident Life & Pensions Limited
Co-operative Wholesale Society Limited Co-operative Insurance Society Limited & The Co-operative Bank Plc
Sections 3(3)(b); 3(4); 5(2)(b); 5(3) & 5(4)(a)


Section 3(3)(b) - Opposition failed.

Section 3(4) - Opposition failed.

Section 5(2)(b) - Opposition failed.

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

  • 1. Business Names: prohibition applies to ‘specified words’ not words in trade marks which are merely similar to specified words.


The Hearing Officer dealt first with the Section 3(4) objections, by which it was contended that use of the mark was prohibited by provisions of the Business Names Act 1985; the word ‘Co-operative’ being a ‘specified word’ in the Company and Business Names Regulations 1981 (SI 1981/1685). The Hearing Officer however noted that the mark in suit had the word ‘Cooperate’ and he doubted that the regulations cited extended to ‘similar words’. He dismissed that objection.

The Section 3(3)(b) objection, as worded, appeared to refer to ‘relative’ grounds and not some absolute objection to the nature of the mark. This ground too was dismissed.

Under Section 5(2)(b) the opponents relied upon a number of their registrations of marks all consisting of or containing the word ‘co-operative’ or ‘co-op’. From the evidence filed the Hearing could not find that the marks were highly distinctive in themselves, or entitled to a greater scope of protection. He compared the marks ‘CO-OPERATIVE INSURANCE’ and ‘CO-OPERATE TO ACHIEVE’. In the result he concluded that there was little similarity in the marks and no likelihood of confusion even in respect of identical services. The opponents were in no better position with any of their other marks and the objection failed accordingly.

This effectively decided the matter under Sections 5(3) and 5(4)(a) also.

Full decision O/365/02 PDF document96Kb