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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> OKO (Trade Mark: Opposition) [2001] UKIntelP o28201 (28 June 2001)
URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o28201.html
Cite as: [2001] UKIntelP o28201
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OKO (Trade Mark: Opposition) [2001] UKIntelP o28201 (28 June 2001)
For the whole decision click here: o28201
Trade mark decision
- BL Number
- O/282/01
- Decision date
- 28 June 2001
- Hearing officer
- Mr J MacGillivray
- Mark
- OKO
- Classes
- 01
- Applicant
- Linseal International Ltd
- Opponent
- Hokochemie GMBH
- Opposition
- Sections 5(2)(b), 5(4)(a) & 3(6)
Result
Section 5(2)(b) - Opposition successful
Section 5(4)(a) - Opposition failed
Section 3(6) - Opposition failed
Points Of Interest
- 4. See the Appointed Person’s decision dated 23 June 2003 (BL O/195/03). In view of agreement between the parties it was requested that the decisions issued on 28 June 2001 (BL O/282/01) and 29 August 2002 (BL O/361/02) be discharged; appeal by
- 1. Ownership of an earlier registered right did not assist the applicants in these proceedings.
- 2. This was a provisional decision in the context that the opponents’ prior right was under opposition by the applicants. Opponents successful opposition confirmed in BL O/361/02 dated 29 August 2002.
- 3. Decision appealed to the Appointed Person. Appeal stayed pending outcome of associated invalidity proceedings. (BL O/116/03).
Summary
The opponents applied on 31 July 1998 to register the mark OKO and device in a number of classes, including Class 1 where the conflict exists, by way of an extension under the Madrid protocol. They claim use in the UK since 1997 in relation to particular goods and services but this use does not impact on the opposition. The applicants own a registration in Class 1 for the mark OKO and device in respect of the same goods as applied for here.
Under Section 5(2)(b) the Hearing Officer concluded that the respective marks are very similar and similar goods are at issue. There is therefore a likelihood of confusion and the opposition on this ground was successful. In passing he noted that the opponents mark is under opposition by the applicants in respect of their earlier registered mark. However, this opposition had to be decided on its own merits.
As the Hearing Officer found the opponents had no reputation in the UK, he concluded that they could not succeed under Section 5(4)(a) - Passing Off. Also under Section 3(6) he accepted that there was a dispute between the parties but this did not justify a finding of bad faith in relation to the filing of this application by the applicants.