Trade mark decision

BL Number

O/306/99

Decision date

1 September 1999

Hearing officer

Mr M Reynolds

Mark

INTIMATE TOUCH

Classes

25

Applicants

Trade Concept Ltd

Opponents

Tots and Teens Ltd (Trading as Continental Exports)

Opposition

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

Result

Section 3(3)(b) - Opposition failed

Section 5(2)(b) - Opposition not pursued.

Section 5(3) - Opposition not pursued.

Section 5(4)(a).. - Opposition failed.

Points Of Interest

• 1. False suggestion that opponent’s mark was registered - having considered claims and counterclaims in relation to the opponent’s use of the ® symbol, the Hearing Officer found the position inconclusive, and he left it for the opponent to review its position and practice if necessary.

Summary

Opposition based on opponent’s use of the mark INTIMATE TOUCH in respect of the same goods (lingerie) specified for the mark in suit, though made predominantly for export.

In regard to opposition under Sections 5(4)(a) (the other grounds either being withdrawn at the Hearing or, in the case of the objection under Section 3(3)(b), deemed misconceived), the Hearing Officer proceeded on the basis that the opponent had an arguable case that misrepresentation and damage would occur if it could establish that there was goodwill under its mark.

In the event, he found that: (a) the opponent’s export business did not create or attract goodwill in the UK, (b) the opponent’s claim to goodwill based on sales to offices of foreign companies in the UK was unsubstantiated, and (c) on the authorities he was not prepared to say that there was a sufficient basis for deciding that the requisite goodwill could be founded on trade with the opponent’s suppliers in the UK. If wrong in the latter respect, he nevertheless concluded that on the evidence the opponent had not substantiated its claim to goodwill as purchasers in the UK. The opposition therefore failed.