Trade mark decision

BL Number

O/095/03

Decision date

2 April 2003

Hearing officer

Mr J MacGillivray

Mark

AUNTIE G

Classes

29, 30, 31

Applicant

Netbiz Limited

Opponent

Aunty G Limited

Opposition

Sections 39(2)(c) & proviso; 3(6)

Result

Section 3(6) - Opposition failed

Section 39 - Opposition failed

Points Of Interest

• Where a class number and a description are in total conflict, ‘words seem more likely to be a true indication of activities or intention than a codification number’.

Summary

The application had originally been made in Classes 9, 35, 38, 41 and 42. The Registrar considered that the services specified in Class 42 were not appropriate to that class; following division of the application, the Class 42 portion was permitted to proceed after reclassification into Classes 29, 30 and 31. It was this portion of the divided application which became the subject of these proceedings. The opponents contended that the reclassification was contrary to the terms of Section 39(2) in that it did not arise from obvious mistakes and it had extended the goods and services covered by the application; a service class (42) had been converted to goods classes.

The Hearing Officer found that where a written description and a classification number are in conflict there is an ‘obvious mistake’ and hence the applicants had cleared the first hurdle, under Section 39(2)(c). He went on to consider the ‘proviso’ objection. In this he found that the reclassification of ‘e-commerce’ into sales of particular goods had not extended the goods or services covered by the application. The Section 39 objections therefore failed.

The opponents’ case was insufficient to justify a refusal under Section 3(6).