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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> DEVICE ONLY MARK (Trade Mark: Opposition) [2001] UKIntelP o48001 (2 November 2001)
URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o48001.html
Cite as: [2001] UKIntelP o48001
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DEVICE ONLY MARK (Trade Mark: Opposition) [2001] UKIntelP o48001 (2 November 2001)
For the whole decision click here: o48001
Trade mark decision
- BL Number
- O/480/01
- Decision date
- 2 November 2001
- Hearing officer
- Mr J MacGillivray
- Mark
- DEVICE ONLY MARK
- Classes
- 14, 18, 21
- Applicant
- Halfords Limited
- Opponent
- Kipling NV
- Opposition
- Sections 5(2)(b), 5(3), 5(4)(a) & 56
Result
Sections 5(2)(b) - Opposition failed
Sections 5(3) - Opposition failed
Sections 5(4)(a) - Opposition failed
Sections 56 - Opposition failed
Points Of Interest
- Details of the opponents' marks, which incorporate devices are attached as an Annex to the Hearing Officer's decision.
Summary
The opponents opposition was based on their ownership of registrations in Classes 16, 18 and 25 of the mark KIPLING and device of an ape; a cartoon ape device in Class 18; a keyring and ape device in Classes 14, 16, 18, 24 and 28 and a KIPLING KIPLING and device of an ape in Classes 14, 16, 18, 24 and 28. The opponents claimed to have a reputation in their ape device, particularly in relation to Class 18 goods (bags etc) but their evidence failed to establish that they had any reputation or goodwill at the relevant date.
Under Section 5(2)(b) the Hearing Officer noted that as regards Classes 14 and 18 identical and similar goods were at issue. Applying the usual tests as regards the applicants Class 21 goods the Hearing Officer determined that they were not the same or similar to any goods within the opponents’ registrations. The Hearing Officer went on to compare the applicants mark with the opponents marks and concluded that they were not confusingly similar. Where the word KIPLING was present it was a powerful distinguishing feature and the respective devices were very different. In the case of the cartoon ape device the other respective devices were so different that confusion was unlikely. Opposition failed on this ground.
As the opponents had failed to prove a reputation or goodwill in their ape device, the Hearing Officer dealt only briefly with the grounds under Section 5(3), 5(4)(a) and 56 and quickly concluded that the opponents also failed on these grounds.