Trade mark decision

BL Number

O/133/02

Decision date

22 March 2002

Hearing officer

Mr M Reynolds

Mark

WW WESTWOOD

Classes

25

Applicant

Manchester Clothing Ltd

Opponent

Vivienne Westwood S.R.L.

Opposition

Sections 3(6); 5(2)(b) & 5(4)(a)**other grounds were cited but were either not pursued or not supported

Result

Section 3(6): - Opposition failed.

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

Section 5(4)(a): - Opposition failed.

Points Of Interest

• 1. Honest concurrent use as a ‘relevant factor’ in allowing a restricted specification inside the opponents’ specification

Summary

The opponents based their case on their CTM registration VIVIENNE WESTWOOD and orb device, registered inter alia, in Class 25, in respect of clothing, footwear and headgear, the same goods as those in the applicants’ specification.

Under Section 5(2)(b) the Hearing Officer took into account, as a relevant factor, the applicants’ honest concurrent use and came to the view that there was no likelihood of confusion on the basis of the trade the applicants had established in their evidence, ie their trade in “children’s school clothing and children’s sports clothing.”

Under Section 5(4)(a) the Hearing Officer considered that the opponents had not substantiated their claim of goodwill in the name WESTWOOD alone, and had not pleaded that in their statement of grounds. If the opponents believed that a separate claim arose they should have pleaded that or sought an amendment. This ground failed.

Turning to the objection based on Section 3(6), the Hearing Officer noted that the statement of grounds gave no clue as to the nature of the objection. There was nothing in the evidence to support a case under that head, and the opposition under it failed accordingly. The application was permitted to proceed with the restricted specification indicated above.

In view of the partial success of both sides the Hearing Officer made no order as to costs.