Trade mark decision

BL Number

O/020/98

Decision date

6 January 1998

Hearing officer

Mr S J Probert

Mark

SENIOR

Classes

09, 16

Applicant

Pegasus Group Plc

Opponent

Quest Software Ltd

Opposition

Sections 3(1)(a), (b), (c) & (d), 5(4)(a) & 6(1)(c)

Result

Sections 3(1)(a)(b)(c) & (d) - Opposition partially successful

Section 5(4)(a) - Opposition failed

Section 6(1)(c) - Opposition failed

Points Of Interest

• None.

Summary

The opponents opposition was based on their use of the terms PLUS, JUNIOR and SENIOR to differentiate variations of software products and they in fact used the mark CHECKBOOK SENIOR on a modest scale from 1994 up to the date of the applicant’s application in March 1995. They also claimed use of the term by two other software houses but the evidence filed to support such claims was, at best, inconclusive. The applicants claimed their mark SENIOR had been in use from 1986 onwards.

Under Section 3 the Hearing Officer concluded that the mark failed to qualify for registration in the prima facie but taking into account the applicants extensive use he concluded that the mark was distinctive in relation to a range of computer software in Class 9 (and associated goods in Class 16) and that the application could proceed in respect of such goods.

Under Section 5(4)(a) - Passing Off - the Hearing Officer decided that the opponents had failed to present an arguable case under this head and, on the basis of the evidence filed, they failed on this ground. Similarly they failed under Section 6(1)(c) since they had failed to show that SENIOR was a well known mark in the context of their products.