Trade mark decision

BL Number

O/082/00

Decision date

3 March 2000

Hearing officer

Mr M Foley

Mark

REPEAT

Classes

25

Applicant

Cocktail Retailers A/S

Opponent

Fashion Box SpA

Opposition

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

Result

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

Section 3(1)(b) - Opposition failed.

Section 5(2)(b) - Opposition failed.

Section 5(3) - Opposition failed.

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

Points Of Interest

• 1. Comparison of the marks REPLAY v REPEAT.

Summary

The opposition under Section 5 was based on the opponents’ use and registrations of the mark REPLAY in respect of identical goods.

The Hearing Officer, after a brief consideration of the matter, dismissed the objections under Section 3.

Under Section 5(2)(b), the goods being identical, the principal matter to be addressed was a comparison of the marks. In this the Hearing Officer noted that the marks ‘REPEAT’ and ‘REPLAY’ had some visual, aural and conceptual similarity. They were, however ‘ordinary and well known words’ and the endings created ‘a distinctive in their appearance and sound’. They were used in respect of clothing, items normally seen by the purchaser. Overall the Hearing Officer found little likelihood of confusion, and the opposition under Section 5(2)(b) failed accordingly.

This effectively decided the matter under Section 5(4)(a) also.

The goods being identical, no objection under Section 5(3) could be sustained.