Trade mark decision

BL Number

O/366/03

Decision date

25 November 2003

Hearing officer

Mr J MacGillivray

Mark

MAC MOBILE

Classes

09, 16, 35, 38, 42

Applicant

Deutsche Telecom AG

Opponent

Apple Computer Inc

Opposition

Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(6): - Not considered.

Section 5(2)(b): - Opposition partially successful.

Section 5(3): - Opposition failed.

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

Points Of Interest

• 1. None

Summary

The opponent’s opposition was based on a number of registrations for the mark MAC and in particular a Community registration covering Classes 9, 16, 38, 41 and 42. The opponent also provided details of use and promotion of their mark but while it showed a reputation and goodwill, it was poorly focused and did not show that the mark enjoyed an enhanced level of distinctiveness.

Under Section 5(2)(b) the Hearing Officer had little difficulty in deciding that the respective marks were closely similar and that goods and services in Classes 9, 16, 38 and 42 were identical or similar. Opposition thus succeeded in respect of these classes. Opposition failed in respect of Class 35 where the Hearing Officer considered the services to be different from the goods and services of the opponent.

Opposition failed on the Section 5(3) ground – dissimilar services – because the evidence filed failed to show that the opponent’s mark enjoyed a high level of public recognition and reputation.

Under Section 5(4)(a) – Passing Off – the Hearing Officer accepted that the opponent had the necessary reputation and goodwill to support this ground of their opposition. However, while the respective marks were similar the opponent’s services in Class 35 were far removed from the applicant’s goods and services and there was no evidence filed to show that misrepresentation or damage would occur. Opposition failed on this ground.

Section 3(6) ground not considered.