Trade mark decision

BL Number

O/254/98

Decision date

2 December 1998

Hearing officer

Mr M Reynolds

Mark

NIX

Classes

25, 28

Applicant

Nicolette Ann Carter

Opponent

Sara Lee International BV

Opposition

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

Result

Sections 3(1)(a)(b)(c) & (d): - Opposition failed.

Section 3(3): - Opposition failed.

Section 3(6): - Opposition failed.

Section 5(2): - Opposition successful (Class 25). Opposition partially successful (Class 28).

Points Of Interest

• None

Summary

The opponents filed details of a number of registrations in Classes 25 and 28 such as NICKS and KNICKS and devices which they said were confusingly similar to the mark applied for. They also claimed that NIX would be understood to describe and denote knickers in view of the long established usage of "knicks" to identify such products.

Under Section 5(2) the Hearing Officer concluded that NIX and NICKS were confusingly similar and as identical goods were at issue in Class 25 the opposition was successful against that Class. The situation was somewhat different in Class 28 where the goods were at best similar and in relation to one of the marks quoted, it was still pending. As no request had been made to suspend the opposition until that case was determined the Hearing Officer did not consider it further. In conclusion the Hearing Officer indicated that he was prepared to allow this application to proceed in Class 28 for a restricted specification.

In view of his decision under Section 5(2) the Hearing Officer did not consider the other grounds in great depth. However, he concluded that the opponents objection under Section 3 was somewhat fanciful and was at least one removed from any descriptive connotation. Under Section 3(6) the Hearing Officer concluded that as the opponents had not supported their claim with substantive evidence, they also failed on this ground.