Trade mark decision

BL Number

O/194/00

Decision date

13 June 2000

Hearing officer

Mr C Bowen

Mark

INSIGHT

Classes

25

Applicant

A C Nielsen Company

Opponent

Taylor Nelson AGB Plc

Opposition

Section 3(1)(a), (b) & (c), Section 3(6), Sections 5(2) & 5(4)(a)

Result

Section 3(1)(a), (b) & (c) - Opposition failed

Section 3(6) - Opposition failed

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• Honest Concurrent use. Where an applicant proceeds to advertisement under the provisions of Section 7, in the face of prior rights, then those rights can not be used by a third party to launch opposition under Section 5(2).

Summary

The applicants filed use of their mark INSIGHT so that the application could proceed to advertisement under the provisions of Section 7 - Honest Concurrent Use - in the face of marks owned by Laurentian Life and Ipsos Insight Marketing. First use was claimed from 5 September 1988.

Under Section 3 the Hearing Officer noted a claim by the opponents that the word "Insight" is used in relation to market research but felt that the claim had not been substantiated to any significant extent. He accepted that the mark INSIGHT had some descriptive connotations but felt that it was not precluded from acceptance. In any event it had the support of some six years user and this clearly allowed acceptance under the proviso to Section 3.

With regard to Section 5(2) the Hearing Officer referred to the provision of Section 7 which stated that if an applicant proceeded under that Section in the face of other firms registered marks and those firms did not oppose, then their registrations could not be used by a third party as a basis of its opposition.

When reviewing the evidence filed in these proceedings the Hearing Officer concluded that the applicants had commenced to use their mark some three weeks before the opponents commenced to use their mark. Thus the opponents had no basis for their ground of objection undr Section 5(4)(a) - Passing Off.