Trade mark decision

BL Number

O/018/03

Decision date

21 January 2003

Hearing officer

Dr W J Trott

Mark

DEVICE ONLY MARK

Classes

16, 25, 28, 41

Applicants

Guinness World Records Limited

Opponents

Saracens Limited & Saracens Rugby Football Club Limited

Opposition

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

Result

Section 5(2)(b) - Opposition partially successful (Classes 15, 25 & 28)

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition partially successful (Class 41)

Points Of Interest

• None

Summary

The opponents opposition was based on their registration of a mark consisting of a crescent and star device with the word SARACENS in Classes 9, 16, 25 and 28 in respect of the same and similar goods as those of the applicants. They also filed evidence of use of their mark but some of the use occurred after the relevant date and some was promotional in the sense that it was associated with Saracens Rugby Club and its activities.

Under Section 5(2)(b) the Hearing Officer accepted that the opponents mark was inherently distinctive but he did not think it had an enhanced level of distinctiveness through use. When comparing the respective goods and services the Hearing Officer noted that there were identical and similar goods in Classes 16, 25 and 28. There were, however, some dissimilar goods in Classes 16 and 28 which he listed. The opponents goods were not similar to the applicants services in Class 41. In comparing the respective marks the Hearing Officer determined that the respective device elements were very similar as both consisted of crescent and star devices and would be referred to as such. Overall the respective marks were confusingly similar and opposition thus succeeded on this ground in respect of the same and similar goods. The application could, however, be accepted for some goods in Classes 16 and 28 and all services claimed in Class 41.

Under Section 5(3) the Hearing Officer decided that the opponents had an insufficient reputation to sustain their ground of opposition in respect of dissimilar goods.

With regard to the ground under Section 5(4)(a) - Passing Off - the Hearing Officer accepted that the opponents had a reputation in their mark in relation to the playing and organisation of the game of rugby. However, in view of the finding under Section 5(2)(b) the Hearing Officer did not believe that this reputation would relate to any goods beyond those already taken into account. In relation to the services claimed in Class 41, however, there was an argument that the services associated with the playing and organisation of rugby and other associated services such as coaching, fitness programmes etc would overlap with the services claimed. However, he did not think that misrepresentation would occur outside the area of rugby football and he therefore excluded such services from the applicants Class 41 application.