For the whole decision click here: o09800
Result
Section 3(6) - Opposition failed
Section 5(2)(b) - Opposition failed
Points Of Interest
Summary
Opponents had registered a device mark (stripecheck II) in Class 25 covering footwear and items of clothing, and had successfully opposed registration of the device element of the present mark. The Hearing Officer was "in little doubt" that present application inspired by impending opposition to earlier application, but decided that adoption of composite mark, in such circumstances, to avoid confusion in use, did not involve bad faith (Section 3(6)), especially since device element not given added prominence.
At the hearing, applicant limited the specification of goods in Class 25 to "outer clothing, but not including footwear" but this did not avoid a clash of identical goods under Section 5(2). The Hearing Officer decided that, despite identical goods being at issue, the average consumer would not be misled into believing goods bearing mark in suit were connected with the opponent, especially since the Hearing Officer could not infer from Opponents’ evidence of extensive worldwide promotion and sales that they had any significant UK reputation in the stripecheck II device mark (solus) for clothing.