For the whole decision click here: o18999
Result
Section 3(3)b - Opposition failed
Section 3(3)b - Opposition failed
Section 5(2)b - Opposition failed
Section 5(2)b - Opposition failed
Section 5(3) - Opposition failed
Section 5(3) - Opposition failed
Section 5(4) (a) - Opposition failed
Section 5(4) (a) - Opposition failed
Points Of Interest
Summary
Opposition based on opponent's registration of the mark SAFILO in Class 9, and its use world-wide since 1934, which it was claimed entitled it to protection under the Paris Convention as a well-known mark. Having determined that identical or similar goods were covered by the respective marks, though only under Class 9 (protective spectacles and goggles), the Hearing Officer proceeded to apply the usual tests under Section 5(2)(b), finding no danger of confusion between the marks given the phonetic differences (which would survive imperfect recollection), the nature and value of the trade in the goods in question and the lack of any conceptual similarity or any evidence that the opponent's reputation extended to protective spectacles. Opposition on that ground therefore failed.
Opposition under Section 5(3) likewise failed for want of similarity between the marks, and the Hearing Officer reached a similar decision under Section 5(4)(a), notwithstanding a finding that the opponent had established goodwill under its marks. In the light of these findings, he saw no need for further consideration of the opponent's claims under the Convention.
Opposition under Section 3(3)(b) was held to be misconceived since no deception arose from the nature of the mark in suit itself, Section 3 providing only absolute grounds for refusal.