Trade mark decision

BL Number

O/242/98

Decision date

26 November 1998

Hearing officer

Dr W J Trott

Mark

NEWS BUNNY

Classes

25

Applicant

Mirror Television Limited (MTL)

Opponent

Henri Fetter Fashion BV

Opposition

Sections 1(1), 3(1)(a), 5(2)(b) & 5(4)(a)

Result

Section 1(1) & 3(1)(a) - Opposition failed

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• None

Summary

The opponents based their opposition on ownership and use of the marks NEWS, NEWS FLASH and device, NEWS CLOTHING and device and NEW COLLECTION and device. Details of modestc user was provided for the period 1985 to 1996.

The applicants said in their evidence that NEWS BUNNY is a concept mark and is based on a brown and white rabbit (which is played on television by an actor in a bunny suit). They claimed that their mark was not similar to the opponents marks

Under Sections 1(1) and 3(1)(a) the Hearing Officer saw no reason why the mark applied for could not function as a trade mark and also distinguish the goods of one party from those of another.

With regard to Section 5(2)(b) the Hearing Officer noted that identical goods were at issue. In relation to the opponents’ marks he considered that their strongest case lay with their NEWS mark and he therefore compared NEWS and NEWS BUNNY. In deciding that the respective marks were not confusingly similar the Hearing Officer noted that they were visually and phonetically distinct. He also noted the strong conceptual difference in the marks and expressed the view that in the NEWS BUNNY mark it was the BUNNY element which was of greatest significance. Opposition failed on this ground.

Under Section 5(4)(a) - Passing Off - the Hearing Officer found that the opponents had only a modest reputation in their mark and in view of the differences in the respective marks he did not see that confusion or misrepresentation was likely.