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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> IMS (Trade Mark: Opposition) [1999] UKIntelP o25399 (26 July 1999)
URL: http://www.bailii.org/uk/cases/UKIntelP/1999/o25399.html
Cite as: [1999] UKIntelP o25399
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IMS (Trade Mark: Opposition) [1999] UKIntelP o25399 (26 July 1999)
For the whole decision click here: o25399
Trade mark decision
- BL Number
- O/253/99
- Decision date
- 26 July 1999
- Hearing officer
- Mr D Landau
- Mark
- IMS
- Classes
- 35, 38, 39, 41
- Applicant
- Interactive Media Services Ltd
- Opponent
- Independent Media Support Ltd
- Opposition
- Sections 3(3)(b), 3(4), 3(6) & 5(4)(a)
Result
Section 3(3)(b) - Opposition not pursued.
Section 3(4) - Opposition not pursued.
Section 3(4) - Opposition not pursued.
Section 3(4) - Opposition succeeded in respect of part of the Section 41 specification. Application to proceed to registration with exclusion clause.
Points Of Interest
- None.
Summary
Opposition based on opponent’s claim to prior trading under the name IMS. In relation to opposition under Section 5(4)(a), the Hearing Officer took it as undisputed that there was close similarity between the respective marks, and he was persuaded on the evidence that the opponent had accrued goodwill under its mark, though only in relation to sub-titling services, and albeit as a result of limited usage in what he took to be a specialist service with not many competing concerns.
Applying the usual case law, he then proceeded to find a likelihood of deception in relation to subtitling services within the Class 41 specification, and he took the view that this would be most effectively countered by ordering an exclusion clause to be added to the end of the Class 41 specification (namely: “; but not including subtitling services”). The opposition was dismissed in respect of the other classes, but there was no award of costs since he deemed the opponent to have succeeded in what he inferred was their key area of concern.