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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> WUNDERKIND (Trade Mark: Opposition) [2001] UKIntelP o35801 (15 August 2001)
URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o35801.html
Cite as: [2001] UKIntelP o35801
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WUNDERKIND (Trade Mark: Opposition) [2001] UKIntelP o35801 (15 August 2001)
For the whole decision click here: o35801
Trade mark decision
- BL Number
- O/358/01
- Decision date
- 15 August 2001
- Hearing officer
- Mr A James
- Mark
- WUNDERKIND
- Classes
- 18, 24, 25
- Applicant
- Wolfgang Joop
- Opponent
- Canadelle Limited Partnership of Canada
- Opposition
- Section 5(2)(b), 5(3) & 5(4)(a)
Result
Section 5(2)(b) - opposition partially successful
Section 5(3) - opposition failed
Section 5(4)(a) - opposition partially successful
Points Of Interest
- Family of Marks. The opponent sought to gain advantage from the registration of a family of WONDER plus marks. However, in the absence of evidence of use of all these marks (other than the mark WONDERBRA), the family of marks argument was dismissed.
Summary
The opponents owned the marks WONDERBRA (Class 25), WONDERLEGS (Classes 10 and 25), WONDERGRIP (Class 18), WONDERFIT (Class 18) WONDERBODY (CTM Class 25), WUNDERPANTS, WONDAPANTS and WUNDAPANTS (Class 25). They also filed evidence to show that they had an extensive reputation in their mark WONDERBRA in relation to brassieres. The applicants filed evidence to support a claim that the word WUNDERKIND has entered the English language as meaning "child prodigy" and thus was easily distinguishable from the opponents marks.
Under Section 5(2)(b) the Hearing Officer considered that the opponents best case rested on their WONDERBRA mark in which they had a reputation and on their WUNDERPANTS mark which he thought closest to the applicants marks. Having carefully compared the respective marks the Hearing Officer concluded that the applicants mark was confusingly similar to the opponents’ marks in respect of identical or very similar goods. The application was therefore allowed to proceed for Classes 18 and 24 and for a restricted specification in Class 25.
Under Section 5(3) the Hearing Officer found that the opposition failed because the goods listed in the Class 18 and Class 24 applications were very different from the goods for which the WONDERBRA mark had its reputation. Under Section 5(4)(a) - Passing Off - the Hearing Officer stated that the opponents were in no better position than under Section 5(2)(b) and that they could not succeed to any greater extent.