Trade mark decision

BL Number

O/092/01

Decision date

22 February 2001

Hearing officer

Mr J MacGillivray

Mark

1 PIN GOLF WHO WANTS TO BE 2ND

Classes

25

Applicant

Gary Frank Dorrington

Opponent

Karsten Manufacturing Corporation

Opposition

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

Result

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

Section 5(3) - Not decided

Section 5(4)(a) - Not decided

Sections 3(1), 3(3)(b), 3(4) & 3(6) - Opposition not pursued

Points Of Interest

• 1. None

Summary

Opposition based on opponent’s registration of the mark PING in Classes 18, 25 and 28. In dealing with the opponent’s case under Section 5(2)(b) the Hearing Officer accepted at the outset that identical goods were involved and that the opponent's mark possessed a reasonably high distinctive character, especially among the prospective customers, ie golfers. He went on to characterise the mark in suit as a composite mark consisting of the word PIN (of which the letter I is surmounted by a pennant containing the numeral 1) above the word GOLF, of which the letter O simulates a golf ball on a tee peg, and which surmounts the stylised legend "who wants to be second". In comparing the respective marks, he found no likelihood of confusion in a visual context, even though the words PIN GOLF were likely to be drawn out of the mark in suit. However, although he also identified significant conceptual differences, he concluded that the likelihood that the mark in suit would be described in aural use as a PIN GOLF mark meant that the respective marks would prove impossible to distinguish in aural use, leading to a likelihood of confusion in a significant part of the trade in golfers' clothing.

Opposition under Section 5(2)(b) was therefore upheld, and in the circumstances the Hearing Officer decided briefly that he did not need to consider the other cited grounds under Section 5.