Trade mark decision

BL Number

O/352/02

Decision date

22 August 2002

Hearing officer

Mr A James

Mark

SPECIAL EFFECTS

Classes

03, 42

Applicants

David Charles Jones & Jenifer Ann Jones

Opponents

L'Oreal SA

Opposition

Sections 3(1)(c), 3(3)(b), 5(2)(b) & 5(4)(a)

Result

Section 3(1)(c) - Opposition failed

Section 3(3)(b) - Opposition failed

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. Change of Ground. The opponents had initially listed Section 3(1)(a) rather than 3(1)(c) in their opposition. On request the Hearing Officer allowed the change.
• 2. Additional Evidence. At the hearing the opponents asked for leave to file evidence in support of their Section 3(1)(c) ground. The Hearing Officer refused the request for lack of reasons for the request and the lateness of the request.
• 3. Precedents. Of little assistance unless supported by relevant evidence.

Summary

The opponents owned registrations for the marks FX and device with the word EFFECTS within the upright of the letter ‘F’ in Class 3. They also filed details of use of this mark but such use was in conjunction with other L’OREAL marks and there was little evidence to suggest that the opponents had any reputation in the letters FX in relation to cosmetics etc. The opponents also claimed to have launched a range of products under the mark SPECIAL FX about one month prior to the relevant date but there was no supporting evidence to substantiate the claim to use and reputation.

Under Section 3(1)(c) the opponents had filed no evidence to support their claim that SPECIAL EFFECTS make-up has a meaning that would be recognised by the public as make-up that is used to produce a special effect such as in films etc. The applicants, however, had filed a dictionary reference as meaning "Scenic illusions created by props and camera work" but as this did not appear particularly relevant as regards cosmetics the Hearing Officer concluded that the opponents failed in this ground of their opposition. In view of the failure of this ground the ground under Section 3(3)(b) also fell away.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the opponents FX mark with the applicants SPECIAL EFFECTS mark. The dictionary reference for FX indicated that it has the meaning "informal, in films, for special effects". The opponents thus argued that the marks were conceptually similar but the Hearing Officer was not convinced that FX would be seen as having its "special effect in films" meaning when used in relation to cosmetics. It was also pointed out by the applicants that FX has alternative meanings such as Foreign Exchange in the financial field. Opposition failed on this ground.

The opponents also failed under Section 5(4)(a) - Passing Off- as they had not established a reputation and goodwill in the marks FX and SPECIAL FX at the relevant date.