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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> M (Trade Mark: Opposition) [2001] UKIntelP o55101 (10 December 2001)
URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o55101.html
Cite as: [2001] UKIntelP o55101
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M (Trade Mark: Opposition) [2001] UKIntelP o55101 (10 December 2001)
For the whole decision click here: o55101
Trade mark decision
- BL Number
- O/551/01
- Decision date
- 10 December 2001
- Hearing officer
- Mr J MacGillivray
- Mark
- M
- Classes
- 07, 09, 11, 12, 16, 39, 42
- Applicant
- Multipart Distribution Limited
- Opponent
- Bayerische Motoren Werke AG
- Opposition
- Sections 3(3)(b); 5(2)(b); 5(3); 5(4)(a) & 56
Result
Section 3(3)(b) - Opposition dismissed
Section 5(2)(b) - Opposition failed
Section 5(3) - Opposition failed
Section 5(4)(a) - Opposition failed
Section 56 - Opposition failed
Points Of Interest
- 1. Pumfrey J’s guidance on Section 5(4)(a) v Section 11 of the 1938 Act followed.
Summary
At the outset the Hearing Officer dismissed the Section 3(3)(b) as it sought to invoke an absolute ground to deal with a relative problem. Under Section 5(2)(b) he took account of the opponents’ marks M TEAM, BMW M POWER, M TECHNIC, and a device mark which incorporated the letter M. He rejected a submission that they be considered collectively, since the letter M was common to all these marks it would link them together in the mind of the public. In this he followed the guidance of the Appointed Person in a recent decision (BL O/411/01). On a ‘global’ appreciation of the marks he found no likelihood of confusion and the attack under Section 5(2) therefore failed. The opponents had no reputation in the UK in these marks and hence the attack under Section 5(3) failed also. After a careful analysis of the relevant factors he also found that the case under Section 5(4)(a) had not been made out following Pumfrey J’s remarks that "the requirements of the (Section 5(4)(a)) objection are considerably more stringent than the enquiry under Section 11 of the 1938 Act: Finally, he found that the opponents had not demonstrated the necessary reputation of the mark, and the Section 56 ground failed also.