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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> PETSURE HEALTH INSURANCE FOR DOGS AND CATS (Trade Mark: Opposition) [2002] UKIntelP o35002 (21 August 2002)
URL: http://www.bailii.org/uk/cases/UKIntelP/2002/o35002.html
Cite as: [2002] UKIntelP o35002
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PETSURE HEALTH INSURANCE FOR DOGS AND CATS (Trade Mark: Opposition) [2002] UKIntelP o35002 (21 August 2002)
For the whole decision click here: o35002
Trade mark decision
- BL Number
- O/350/02
- Decision date
- 21 August 2002
- Hearing officer
- Mr M Reynolds
- Mark
- PETSURE HEALTH INSURANCE FOR DOGS AND CATS
- Classes
- 36
- Applicants
- Petsure Limited
- Opponents
- People’s Dispensary for Sick Animals
- Opposition
- Sections 3(6), 5(2)(b) & 5(4)(a)
Result
Section 3(6) - Opposition successful
Section 5(2)(b) - Opposition successful
Section 5(4)(a) - Not decided
Points Of Interest
- None
Summary
The opponents opposition was based on their ownership of a registration for the mark PETSURANCE and device (and the descriptive wording Protection for your pet. Peace of mind for you) in Classes 16 and 36 in respect of the same and similar services as those of the applicants. They also filed evidence of use of this mark and the mark PETSURANCE in relation to the provision of insurance services for pets from 1997 onwards.
Under Section 5(2)(b) the Hearing Officer noted that identical and similar services were at issue and went on to compare the respective marks ‘PETSURE and device’ and ‘PETSURANCE and device’. The Hearing Officer did not consider either mark to be particularly distinctive but he considered them to be conceptually close and thought it likely that consumers, on encountering the respective marks, would wrongly believe that the insurance services came from the same or economically linked undertakings. Indeed the opponents had filed such evidence from one of their clients who had been confused. Opposition succeeded on this ground in respect of both marks applied for.
In view of his decision under Section 5(2)(b) the Hearing Officer saw no need to consider the Section 5(4)(a) ground.
The ground under Section 3(6) arose for the following reasons. When the opponents first started to trade, their insurance policies were administrated by a company called BCD Ltd. This company was replaced in 1998 and it would appear that one of their directors set up the applicant company to offer insurance services for pets, and made application for the marks in suit. This new company wrote to the opponents customers when their policies were due for renewal to say that the opponents’ policies were no longer available and that a new scheme under the PETSURE mark would replace it. The Hearing Officer, having found that the respective marks were similar, found the applicants to have acted outside the standards of acceptable commercial behaviour and concluded that the applications had been filed in bad faith. The opponents thus succeeded on this ground.