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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) [2002] UKIntelP o07302 (15 February 2002)
URL: http://www.bailii.org/uk/cases/UKIntelP/2002/o07302.html
Cite as: [2002] UKIntelP o07302, [2002] UKIntelP o7302
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DEVICE ONLY MARK (Trade Mark: Opposition) [2002] UKIntelP o07302 (15 February 2002)
For the whole decision click here: o07302
Trade mark decision
- BL Number
- O/073/02
- Decision date
- 15 February 2002
- Hearing officer
- Mr M Knight
- Mark
- DEVICE ONLY MARK
- Classes
- 16
- Applicants
- Bantam Doubleday Dell Publishing Group Inc
- Opponents
- Pickering & Chatto Limited
- Opposition
- Section 5(2)(b) & 5(4)(a)*
Result
Section 5(2)(b) - Opposition succesful
Section 5(4)(a) - No formal finding
Points Of Interest
- Honest concurrent use.
Summary
The opposition was based on the opponents’ registration of a dolphin and anchor device in Class 16. The Hearing Officer quickly came to the view that the marks were similar and the goods identical. He therefore concentrated on the extent and effect of the honest concurrent user claimed by the applicants, this being one of the relevant factors in determining whether or not there was a likelihood of confusion. The Hearing Officer noted that the material on which he was being asked to base a judgement as to what impact the applicants’ mark might have had on the public’s perception prior to 1989 was "very scant". The "where, when what and to whom?" approach was the correct analysis, he thought, but the "factors identified in PIRIE [1933] RPC 147" ... were "not wholly appropriate for the determination of the issue" since that case dealt with matters under the old law, where registration could take place even where confusion might result. Such an outcome was not possible under the present law, unless the holder of the earlier right consented.
In the result he felt unable to conclude that there would no likelihood of confusion as a result of the applicants’ use and the opposition under Section 5(2)(b) succeeded accordingly.