Trade mark decision

BL Number

O/313/01

Decision date

16 July 2001

Hearing officer

Mr Geoffrey Hobbs QC

Mark

DEVICE ONLY MARK

Classes

25

Applicant

Joe Boxer Holdings Inc (Previously Joe Boxer Corporation)

Opponent

Barter International Group Limited

Opposition

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

Result

Section 3(1)(b) - Opposition successful.

Section 3(6): - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

• 1. This was an appeal from the Hearing Officer’s decision dated 22 June 2000 (BL O/213/00). Hearing Officer’s decision to allow registration under Section 3(1)(b) overturned.

Summary

The Appointed Person upheld the Hearing Officer’s decision under Section 5(4)(a) on the basis that the opponents had not shown use of their mark in the United Kingdom prior to the relevant date.

As regards Section 3(6) the Appointed Person believed that the applicants had filed their application as a result of proceedings between the parties in France. This had been to defend what they considered to be their commercial interests and there was no question of bad faith in making the application. Opposition failed on this ground.

Turning to the grounds under Section 3(1)(b) the Appointed Person noted that both parties had accepted that third parties had made use of the sign in a non-commercial fashion. It was generally the case that a smiley face device was used to indicate light-heartedness, pleasure, amusement, affection, approval etc; to indicate good news items and in fact it is used as a standard icon in Microsoft’s software. He thus did not think it would be perceived as an indication of origin for goods or services since it appeared to lack distinctive character in a commercial sense. Opposition thus succeeded on this ground and the Hearing Officer’s decision to allow registration overturned.