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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> MIZZ (Trade Mark: Opposition) [2003] UKIntelP o16703 (19 June 2003)
URL: http://www.bailii.org/uk/cases/UKIntelP/2003/o16703.html
Cite as: [2003] UKIntelP o16703
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MIZZ (Trade Mark: Opposition) [2003] UKIntelP o16703 (19 June 2003)
For the whole decision click here: o16703
Trade mark decision
- BL Number
- O/167/03
- Decision date
- 19 June 2003
- Hearing officer
- Mr M Foley
- Mark
- MIZZ
- Classes
- 09, 16, 35
- Applicant
- IPC Magazines Limited
- Opponent
- Liberty Media for Women LLC
- Opposition
- Section 5(2)(b)
Result
Section 5(2)(b) - Oppostion 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. Proceedings appealed to the Appointed Person. In her decision dated 10 May 2004 (BL O/140/04) the Appointed Person upheld the Hearing Officer’s decision.
Summary
See also BL O/166/03 where the same two parties were involved in opposition proceedings. In that case Liberty were the applicants and IPC the opponents.
In this case the opponents raised a number of grounds but in the event the only ground pursued was under Section 5(2)(b) and was based on an earlier pending application for the mark Ms (and variations thereof) in Class 16 in respect of identical goods.
The opponents claimed use of their mark but such use as may have occurred was modest and the Hearing Officer did not consider that it enhanced the distinctiveness of the opponent’s mark.
The applicants had fairly extensive use of their mark MIZZ from 1985 onwards and the Hearing Officer accepted that they had a reputation and goodwill in their mark at the relevant date.
Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue as regards Class 16 women’s magazines, and similar goods in Class 9 and similar services in Class 35, and went on to compare the respective marks Ms and MIZZ. The Hearing Officer accepted that the respective marks were phonetically and conceptually similar but he was of the opinion that it was common practice in the magazine field for publishers to choose allusive or semi-descriptive titles. He therefore believed that consumers would be able to distinguish the separate titles and bearing in mind the fact that the applicants had been using their mark for some twelve years prior to the relevant date, with no instances of confusion occurring, the Hearing Officer did not believe that there was a likelihood of confusion in the future. A similar finding applied to the Class 9 goods and Class 35 services. Opposition thus failed.