Trade mark decision

BL Number

O/328/03

Decision date

30 October 2003

Hearing officer

Mr J MacGillivray

Mark

ECO SOLDER

Classes

01, 06

Applicant

Senju Metal Industry Co Ltd

Opponent

Multicore Solders Limited

Opposition

Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b): - Opposition failed.

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

Points Of Interest

• See also BL O/329/03 where the same two parties were in opposition.

Summary

The opponent’s opposition was based on their ownership of registrations of the mark ECOSOL in Classes 1 and 6 in respect of identical goods. They also claimed use of their mark for some ten years but this use was not well documented or specific. The Hearing Officer was unable to conclude, under Section 5(2)(b), that the opponent had an enhanced reputation in their mark or that they had substantiated their ground under Section 5(4)(a) – Passing Off. The opponent thus failed on this latter ground.

Under Section 5(2)(b) it was common ground that identical goods were at issue. Also the applicant accepted that the words ECO SOLDER were descriptive in relation to environmentally friendly solder products, distinctiveness resting on the combination with the device element in the mark. In comparison the opponent’s mark ECOSOL was an invented word and in comparing the two marks the Hearing Officer concluded that confusion nor association was likely. The opponent also failed on this ground