Trade mark decision
- BL Number
- Decision date
- 16 December 2004
- Hearing Officer
- Mr D Landau
- PUB IDOLS
- 09, 41
- Registered Proprietor
- Alan Brown
- Applicants for a declaration of invalidity
- FremantleMedia Operations BV & 19 TV Limited
- Application for Invalidation
- Section 47(citing Sections 3(6), 5(2)(b), 5(3) & 5(4)(a))
Application for invalidation, Section 47, citing Sections 5(2)(b) & 5(4)(a) successful.
Points Of Interest
- 1. Comparison of the marks POP IDOL & device v PUB IDOLS.
- 2. Comparison of the goods/services; rental of machines similar to the machines themselves.
The Registration was in respect of karaoke machines, and services in connection with rental of same, karaoke competitions, musical entertainment etc. The application for invalidation was based on use and registrations of the mark POP IDOL and device; it had been the title of a television series and had also been used and registered in respect of "spin-off" merchandising.
In their statement of grounds the applicant had claimed that their marks was well-known and consequently entitled to the protection afforded by Section 56(2), and they therefore claimed that the registration was contrary to Section 5(4)(a). The Hearing Officer, however, in his preliminary remarks pointed out that well-known marks are afforded protection under Sections 5(1), 5(2) and 5(3) of the Act by reason of the terms of Section 6(1)(c) and it was under these Sections therefore that any such claim should be made.
The Hearing Officer then turned to consider the matter under Section 5(2)(b). Comparing the goods and services he found them, for the most part, identical; the rental of karaoke machines, he found, had a “degree of similarity” with the machines themselves. Going on to compare the marks he eventually found a degree of similarity between them and, on a global assessment a likelihood of confusion. This success under Section 5(2)(b) made the Section 5(3) objection redundant.
Having examined the matter under Section 5(4)(a) the Hearing Officer concluded that the applicant succeeded under this Section also. He made no finding under Section 3(6)
Full decision O/369/04 88Kb