Trade mark decision

BL Number

O/248/02

Decision date

19 June 2002

Hearing officer

Mr G Salthouse

Mark

CHF1 CHANNEL F1

Classes

03, 04, 09, 14, 16, 18, 25, 28, 32, 35, 38, 41, 42

Applicant

Channel F1 Limited

Opponent

Chanel Limited

Opposition

Sections 3(6), 5(2) & 5(4)

Result

Section 3(6): - Opposition successful (provisional decision).

Section 5(2)(b): - Opposition failed.

Section 5(4)(a): - Not considered.

Points Of Interest

• 1. Provisional decision under Section 3(6) as regards intention to use. Applicants allowed 28 days to deny the opposition and to file information for the Hearing Officer's consideration.
• 2. Supplementary decision dated 14 October 2002 (BL O/416/02). Provisional decision under Section 3(6) reversed.

Summary

The opponents initially filed opposition under Sections 5(2), 5(3) and 5(4) and the applicants denied these grounds in their counterstatement. However, the grounds were amended to include Section 3(6) and the applicants did not file an amended counterstatement to contest the new Section 3(6) ground.

The applicants stated that it was intended to establish an internet web site with a view to providing information about all aspects of Formula One Racing and the site would, it was hoped, be expanded to include fashion, music etc. The opponents pointed to the wide range of goods claimed and suggested that it was unlikely that the mark applied for would be used in relation to all the goods claimed. Due to an error in the Registry the applicants had not contested the Section 3(6) ground and the Hearing Officer provisionally found for the opponents. However, he allowed the applicants 28 days to file a counterstatement and to state how they intended to progress from their current position to trade in the range of goods claimed.

Under Section 5(2)(b) the opponents' opposition was restricted to Classes 3, 9, 14, 18 and 25 and the Hearing Officer established that identical and similar goods were at issue. The opponents owned registrations for their CHANEL marks and had also filed evidence to show that they had a reputation in the mark CHANEL in relation to clothing for women and girls and fragrance goods. In comparing the respective marks the Hearing Officer concluded that the dominant element in the applicants’ mark was the CHF1 logo and he did not believe that the mark as a totality would be referred to by the CHANNEL word element. As totalities he considered the respective marks to be readily distinguishable visually and aurally and he decided that there was no likelihood of confusion of the public even if the respective marks were used on identical goods. Opposition failed on this ground.

Section 5(4)(a) - Passing Off - not considered, as it was accepted at the Hearing that the opponents were in no better position under this Section as compared to Section 5(2)(b).