For the whole decision click here: o03603
Result
Section 3(6) - Opposition failed
Section 5(1) - Opposition failed
Section 5(2)(a) - Opposition failed
Section 5(2)(b) - Opposition partially successful
Points Of Interest
Summary
There has been a history of disputes between these two parties. In 1990 the present opponents Star Brite International applied to register the mark STAR BRITE (stylised) in Class 3 in respect of a range of cleaning and polishing preparations etc. After opposition by the current applicants Starbrite Chemicals Ltd the application was restricted to "all for use on marine vehicles".
Subsequently Starbrite Chemicals Limited applied to register their STARBRITE and device of a star mark in Class 3 in respect of a range of cleaning and polishing preparations etc and following opposition by Star Brite International this application was restricted to "all for automotive use or for use in the food and catering trade; and all for sale in South East of England; all included in Class 3 but not including any of the aforesaid goods for use in relation to recreational vehicles or mobile homes".
Still later in 1996 Star Brite International applied to register their STAR BRITE (block capitals) mark as a Community Mark. This mark is registered for a range of cleaning and polishing preparations etc without any restriction.
In these proceedings both parties re-filed material which had been filed in the earlier Registry proceedings and updated it to some extent. Any new evidence did not affect the strength of either party's case. However, Star Brite International discovered an error in Starbrite Chemicals evidence and used this fact to buttress their ground under Section 3(6).
In his evidence Mr Warriner, on behalf of Starbrite Chemicals Ltd claimed that its mark "STARBRITE & star device had been used in advertisements in the Yellow Pages publication and local newspapers". In their reply evidence Star Brite International said that investigations of Yellow Pages showed no evidence of use of the applicants mark. They claimed 'bad faith' and asked that the application be refused under Section 3(6). The Hearing Officer considered the matter carefully, noting that Mr Warriner could have filed a supplementary declaration to clarify matters but had not done so. However, the claim to advertisements also applied to local newspapers and no evidence had been filed to show that this claim was in error. In any event the Hearing Officer did not accept that one incorrect fact tainted the whole application such that it amounted to "bad faith". Opposition failed on this ground.
Under Section 5(1) the Hearing Officer had no difficulty in determining that the respective marks were not identical and therefore the grounds of opposition under Sections 5(1) and 5(2)(a) failed.
With regard to Section 5(2)(b) there was no dispute that the respective marks were confusingly similar and the Hearing Officer went on to compare the respective goods. As a first step the Hearing Officer decided that the applicants Class 2 goods were not similar to the opponents goods in Class 3. However, in view of the opponents wide coverage in their Community registration there was no doubt that the respective goods in Class 3 were identical/similar and in Classes 3 and 21 were similar. In concluding that the opponents were successful in their ground of opposition under Section 5(2)(b) in respect of the applicant's Classes 3 and 21 the Hearing Officer considered the question of Honest Concurrent Use which had been a factor in the earlier decisions under the 1938 Act. However, on the basis of the evidence filed it was not clear that the two party's were operating in the same market and indeed the applicant's representative at the hearing had argued that they did not.