Trade mark decision

BL Number

O/166/03

Decision date

19 June 2003

Hearing officer

Mr M Foley

Mark

Ms.

Classes

16

Applicant

Liberty Media for Women LLC

Opponent

IPC Magazines Limited

Opposition

Sections 3(1)(b), (c) & 5(4)(a)

Result

Section 3(1)(b) & (c) - Opposition failed.

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

Points Of Interest

• 1. The similarity of marks may be more tolerated in relation to magazines than in relation to other goods and services.
• 2. The opponents appealed the Section 5(4)(a) decision to the Appointed Person. In her decision dated 10 May 2004 (BL O/141/04) the Appointed Person upheld the Hearing Officer’s decision.

Summary

See also BL O/167/03 where the same two parties were involved in opposition proceedings. In that case IPC were the applicants and Liberty the opponents.

The opponent’s opposition was based on a claim that the mark applied for was not distinctive and also that they themselves had used a similar mark MIZZ from 1985 onwards and had a reputation in their mark. The Hearing Officer accepted from the evidence filed that the opponents had a reputation and goodwill in their mark.

The applicants claimed use of their mark from 1972 onwards but the early use appears to have occurred in the USA and modest use in the UK did not commence until 1993. By 1995 sales had fallen to 2,100 editions of the September/October publication.

Under Section 3(1)(b) and (c) the Hearing Officer considered whether the mark Ms (and variations thereof) was descriptive and thus non-distinctive in relation to magazines for women. He concluded that Ms is not an apt or normal way of referring to women’s magazines nor is it a term that represents the essential characteristics of such goods or a direct reference to the characteristic of magazines. At best it brings to mind that the magazine is aimed at feminists or women in general. Overall the Hearing Officer concluded that the marks (series of 5) were registrable and thus the opposition under Section 3(1)(b) and (c) failed.

In view of the modest use filed in support of the application by the applicants, the Hearing Officer indicated that if he had not accepted the marks in the prima facie, he could not have concluded from the evidence before him, that the applicants marks had acquired a distinctive character at the date of application and thus benefit from the proviso to Section 3.

Under Section 5(4)(a) – Passing Off – the Hearing Officer accepted that the opponents had an earlier reputation and goodwill in their mark MIZZ as compared to the applicants’ claims. He also considered the respective marks to be phonetically and conceptually similar. However, he was of the view that it was common practice in the magazine field for publishers to choose allusive or semi-descriptive titles and he believed that consumers would be able to distinguish the separate titles and it was unlikely that there would be any confusion such as would lead to misrepresentation or that the opponents would suffer damage in some material way. Opposition failed on this ground.