For the whole decision click here: o12400
Result
Sections 3(1)(b) & (c) - Opposition failed
Section 5(2)(b) - Opposition failed
Section 5(4)(a) - Opposition failed
Points Of Interest
Summary
Objection under Section 3 found to lack real substance, the facts being readily distinguished from those in Siemens' Application (the XPRESSLINK case) in that the trade mark in suit denoted nothing about any characteristic of the goods themselves, and in any event it was not even descriptive of a tailoring service in the absence of evidence to that effect, which might have pointed to a lack of the distinctive character needed to function as a trade mark for tailored clothes.
Opposition under Section 5(2)(b) was based on (a) opponent's claim that their mark "Express" was entitled to protection as a well-known mark under the Convention, and (b) on their registered UK trade mark "Exp Express and device". As for (a), the Hearing Officer found no basis for objection, the "Express" mark having not even achieved a reputation, let alone met the requirement of being well-known, since on the evidence it was not known to a significant proportion of the relevant (UK) public. As for (b), he found no likelihood of confusion, even in respect of identical goods, since the common word "Express" in the two marks had a relatively weak distinctive character, which would not suggest trade source association, particularly in light of other substantial visual differences. The small possibility of aural confusion did not suggest a likelihood of confusion. Opposition under Section 5(2)(b) therefore dismissed.
Opposition under Section 5(4)(a) also failed since the Hearing Officer was not persuaded that the opponent had a business and goodwill in the UK, notwithstanding evidence of some UK residents purchasing goods in the opponent's stores in the USA, but in any event there was no evidence of misrepresentation.