Trade mark decision

BL Number

O/153/02

Decision date

4 April 2002

Hearing officer

Mr J MacGillivray

Mark

NOMAD

Classes

05, 10, 42

Applicant

Nomad Travellers Store & Medical Centre Limited

Opponent

The Nomad Company BV

Opposition

Sections 5(2)(b); 5(3) & 5(4)(a)

Result

Section 5(2)(b): - Opposition failed (but spec to be amended).

Section 5(3): - Opposition failed.

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

Points Of Interest

• 1. Classification issues

Summary

The opposition was based on registrations of the opponents’ mark NOMAD. It was common ground that the opponents’ marks (registered in classes 18, 20, 22 and 25) were identical with or similar to the mark in suit.

Under Section 5(2)(b) the opponents’ attack was confined to the anti-mosquito products and the clothing wrist bands, head bands and ankle bands in Class 5. These, they contended were similar to their products (mosquito nets and clothing) in Classes 20 and 25. The Hearing Officer, however, ruled that mosquito nets were proper to Class 24 and were not included in the opponents’ registrations. The clothing wrist bands etc were proper to Class 25, he said, and should not have been included in the Class 5 specification in the application. These would have to be deleted (removing the Section 5(2) objection) or, if the applicants wished, re-classified to Class 25 with a consequent addition to the application - (in which case the Section 5(2) objection would succeed).

Under Section 5(4) the Hearing Officer found that the opponents’ evidence did not support a claim of reputation or goodwill sufficient for a passing-off action. This same deficiency in the evidence decided the matter under Section 5(3).

The application would be allowed to proceed provided the mis-classified items in Class 5 were deleted.