Trade mark decision

BL Number

O/141/04

Decision date

10 May 2004

Hearing officer

Professor Ruth Annand

Mark

Ms.

Classes

16

Applicant

Liberty Media for Women LLC

Opponent

IPC Media Limited

Opposition

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

Result

Section 5(4)(a) - Appeal dismissed.

Points Of Interest

• 1. See Hearing Officer’s decision dated 19 June 2003 (BL O/166/03).
• 2. See also associated appeal (BL O/140/04).

Summary

This was an appeal to the Appointed Person of the Hearing Officer's decision of 19 June 2003 (BL O/166/03). In that decision the Hearing Officer decided that the mark in suit was not without distinctive character and waived the grounds of opposition under Section 3(1)(b) and (c). Also that the respective marks Ms (as a series) and MIZZ (the opponents’ mark) were not so similar that confusion was likely. Opposition thus failed on the Section 5(4)(a) ground.

In their appeal the opponents accepted the Section 3 decision but as regards the Section 5(4)(a) ground they claimed that the Hearing Officer had failed to take into account notional and fair use across the breadth of the specification applied for. Instead he had given too much weight to the niche markets of the respective parties; the applicants' publication aimed at mature feminists and the magazine of the opponents aimed at young teenage females. Therefore, the application should have been refused or had its specification restricted.

The Appointed Person reviewed the Hearing Officer’s decision and was satisfied that he had considered the conflict in the light of the respective specifications and she therefore dismissed the appeal. The Appointed Person also dismissed a request that the applicants’ specification should be restricted to "Periodical magazines for women, all limited to feminists issues" as such a limitation would be unworkable as such wording was not sufficiently precise.