Trade mark decision

BL Number

O/136/04

Decision date

14 May 2004

Hearing officer

Mrs A Corbett

Mark

INGENICO

Classes

09, 16, 37, 42

Applicant

Ingenico Fortronic Ltd

Opponent

Retail Research & Development Ltd

Opposition

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

Result

Section 5(2)(b) - Opposition successful in respect of Classes 9, 16 & 42. Failed in respect of Class 37.

Section 5(4)(a) - Not decided.

Points Of Interest

• 1. None

Summary

The opponent’s opposition was based on its ownership of registrations in Class 9 of the mark INGEN in respect of 'computer programmes and computer software'. It also provided details of use of its mark on a significant scale from 1997 to 2001 and claimed use back to 1987. A particular area of conflict was identified at electronic point of sale terminals where both sides target software.

The applicant also claims use of its mark and says goods have been sold through UK distributors since 1989 and provides turnover figures for the years 1998 to 2000 totaling some £44m. Promotion is said to be about £.5m per annum. The applicant claims there is little likelihood of confusion since it is interested in payments systems and the opponent is interested in storage systems. The Hearing Officer expresses some doubt as to whether the evidence provided by the applicant relates solely to the UK.

Under Section 5(2)(b) the Hearing Officer concluded that the respective marks were similar; that the respective goods in Class 9 were identical and similar and that the goods of the opponent in Class 9 were similar to the goods of the applicant in Classes 16 and 42. Overall the Hearing Officer concluded that there was a likelihood of confusion and the opposition succeeded against Classes 9, 16 and 42 on the Section 5(2)(b) ground.

In view of the decision reached under Section 5(2)(b), the ground under Section 5(4)(a) was not considered in detail since the Hearing Officer was of the view that the opponent was in no better position under Section 5(4)(a) as compared to Section 5(2)(b).