For the whole decision click here: o39302
Result
Section 3(6) - Opposition failed.
Section 5(4)(a) - Opposition successful.
Points Of Interest
Summary
Dealing with a preliminary point the Hearing Officer was emphatically of the view that the ‘overblown claims’ made by or on behalf of the applicant in ‘preliminary skirmishes’ prior to the launch of formal proceedings should not cast doubt on the evidence filed subsequently.
Under Section 3(6), the opponent alleged: i) that the applicant did not have a bona fide intention to use the mark and ii) the applicant knew of the opponent’s mark at the date of application. The Hearing Officer found under i) that on the material before him the opponent had failed to make out a prima facie case. Under ii) the Hearing Officer noted that the opponent’s case was heavily reliant on establishing that the applicant’s enquiries and searches prior to application would have brought to light the existence of the opponent’s business, particularly by use of the internet. Again the Hearing Officer found on the basis of the evidence before him, that the opponent had not made out a prima facie case.
Under Section 5(4)(a) the Hearing Officer found that the marks were closely similar. The opponent’s goodwill at the relevant date "may not have been extensive but it existed", he decided. ‘Not without hesitation’, he concluded that ‘certain deficiencies in the opponent’s evidence’ should not obscure the fact that the evidence as a whole pointed to goodwill subsisting in the opponent’s EATALIA DIRECT logo, at the relevant date. The opposition succeeded accordingly.