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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> DEVICE ONLY MARK (Trade Mark: Opposition) [2003] UKIntelP o04603 (17 February 2003)
URL: http://www.bailii.org/uk/cases/UKIntelP/2003/o04603.html
Cite as: [2003] UKIntelP o4603, [2003] UKIntelP o04603
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DEVICE ONLY MARK (Trade Mark: Opposition) [2003] UKIntelP o04603 (17 February 2003)
For the whole decision click here: o04603
Trade mark decision
- BL Number
- O/046/03
- Decision date
- 17 February 2003
- Hearing officer
- Mr G Salthouse
- Mark
- DEVICE ONLY MARK
- Classes
- 14, 16, 25, 28
- Applicant
- University of Northumbria at Newcastle
- Opponent
- Seahorse Holdings Limited
- Opposition
- Sections 5(1), 5(2)(a), 5(2)(b) & 5(4)
Result
Section 5(1): - Ground dismissed.
Section 5(2)(a): - Ground dismissed.
Section 5(2)(b): - Opposition essentially successful.
Section 5(4): - Not considered.
Points Of Interest
- 1. See also BL O/047/03
Summary
The opponents opposition was based on registrations of the word SEAHORSE and device of a seahorse with crown device in Classes 16 and 25. The opposition was, therefore, in respect of some goods in Class 16 such as printed matter etc and all of Class 25. The opponents filed details of modest use of their device of a Seahorse and crown device mark in respect of magazines and articles of clothing.
The applicants argued in their evidence that the device of a Seahorse is associated with the City of Newcastle as it appears in the City’s coat of arms; also in the club badge of Newcastle United and in the applicants coat of arms which is registered as a trade mark in Class 25. They also argued that the crown device in the opponents mark was a strong distinguishing feature and thus the respective marks were not confusingly similar.
As the respective marks were clearly not identical the Hearing Officer dismissed the grounds under Section 5(1) and 5(2)(a) and went on to consider the matter under Section 5(2)(b). As regards the respective goods the Hearing Officer concluded that in respect of Class 25 identical goods were at issue and in respect of Class 16, with the exception of greeting cards, identical and similar goods were at issue.
As regards the respective marks the Hearing Officer did not consider that the distinctiveness of the opponents marks were enhanced by the modest use. He considered that their strongest case rested on their Seahorse device and crown device mark. Visually the respective marks were somewhat different but both would be referred to as Seahorse marks and conceptually both marks were relatively accurate representations of a Seahorse. Overall the Hearing Officer considered that the respective marks were confusingly similar and that the opponents succeeded in their opposition other than in respect of greeting cards in Class 16.
The Hearing Officer proposed an amended specification in Class 16 for the applicants consideration.
In view of his decision under Section 5(2)(b) the Hearing Officer did not consider the Section 5(4) ground.