Trade mark decision

BL Number

O/448/01

Decision date

9 October 2001

Hearing officer

Mr S P Rowan

Mark

K KELME

Classes

25

Applicant

Aberdin S.L.

Opponent

C & J Clark International Ltd

Opposition

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

Result

Section 5(2)(b): - Opposition partially successful.

Section 5(4)(a): - Opposition partially successful.

Section 3(6): - Opposition failed.

Points Of Interest

• The opponents did not file their Section 3(6) evidence until the reply stage. This was criticised. Section 3(6) is a serious matter and should be dealt with in main evidence round.

Summary

The opponents opposition was based on their ownership of their K mark which they have used for over 100 years in relation to boots and shoes and in which they have an extensive registration. The applicants specification covered sports clothing, sports footwear and headgear and the Hearing Officer decided from the evidence that the opponents did not have a reputation for such goods.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue given the width of the opponents specifications and he concluded that the respective marks were confusingly similar in relation to sports footwear and headgear, bearing in mind the prominence of the letter K in the applicants mark. Also the evidence showed that the opponents used their K mark with other sub-brands and the Hearing Officer believed that the public might assume KELME was merely another sub-brand and thus associate the two undertakings.

Under Section 3(6) the main submission by the opponents was that they had an agreement with the applicants parent company that they would not use a "K" mark in the UK. However, the evidence filed was insufficient for the Hearing Officer to reach a conclusion in this matter and he found that the opponents failed on this ground.

In view of the decision under Section 5(2)(b), Section 5(4)(a) was not considered in detail.