Trade mark decision

BL Number

O/406/02

Decision date

14 October 2002

Hearing officer

Mr M Reynolds

Mark

ROCKFORD

Classes

25

Applicant

Bassi Fashions Ltd

Opponent

Rockport (Europe) BV

Opposition

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

Result

Section 3(6): - Opposition failed.

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

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

Points Of Interest

• 1. Section 3(6). Whether and to what extent surrounding circumstances can be taken into account under this heading.
• 2. See also BL O/407/02 and BL O/408/02.

Summary

The opponents opposition was based on their ownership of registrations for the mark ROCKPORT in Class 25 in respect of the same and similar goods as those of the applicant. The opponents also filed details of use of their mark but the Hearing Officer was not persuaded that the opponents had an enhanced reputation in their mark at the relevant date. However, he accepted that it was an inherently distinctive mark.

As identical goods were at issue under Section 5(2)(b) the Hearing Officer went on to compare the respective marks ROCKPORT and ROCKFORD. He speculated that ROCKPORT might be seen as a place name and ROCKFORD a surname or place name. However, the Hearing Officer considered the respective marks to be sufficiently different visually and aurally so that confusion of the public was unlikely. Opposition failed on this ground.

In view of his decision under Section 5(2)(b), the Hearing Officer considered that the opponents were in no better position under Section 5(4)(a) and that they must also fail on that ground.

The opponents principal case under Section 3(6) was that, essentially in addition to adopting a mark similar to theirs, the applicants had also used another mark of theirs XCS with their ROCKFORD mark. The applicants explained that this had happened for only a short period in 1995 when their suppliers had created a number of designs for them including the combination ROCKFORD with XCS and the words "extreme clothing system". Only some 50 samples were produced and the goods were never sold on a commercial basis. Bad faith was denied by the applicants.

The Hearing Officer noted that the allegations under Section 3(6) were apart from the mark applied for but went on to consider the matter. The opponents applied to register their XCS mark in May 1995 (claiming a priority date from November 1994). A claim to use from 1992 was not substantiated and first use by the opponents did not occur until 1998. Equally the Hearing Officer noted that the applicants had not provided any information about their 1995 use or their dealings with their suppliers. In this case the Hearing Officer accepted that the opponents had "misgivings" about the circumstances of the applicants application and use, but they had provided insufficient evidence to prove that the applicants had acted in bad faith. Opposition failed on this ground.