Freely Available British and Irish Public Legal Information
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> ESSENCE (Trade Mark: Opposition) [2004] UKIntelP o16804 (10 June 2004)
URL: http://www.bailii.org/uk/cases/UKIntelP/2004/o16804.html
Cite as: [2004] UKIntelP o16804
[New search] [Printable PDF version] [Help]
ESSENCE (Trade Mark: Opposition) [2004] UKIntelP o16804 (10 June 2004)
For the whole decision click here: o16804
Trade mark decision
- BL Number
- O/168/04
- Decision date
- 10 June 2004
- Hearing officer
- Mr D Landau
- Mark
- ESSENCE
- Classes
- 21
- Applicant
- Elia International Limited
- Opponent
- Koninklijke Philips Electronics NV
- Opposition
- Sections 3(1)(a), 3(6), 5(1), 5(2)(b) & 5(4)(a)
Result
Section 3(1)(a) - Opposition failed
Section 3(6) - Opposition failed
Section 5(1) - Opposition failed
Section 5(2)(b) - Opposition partially successful
Section 5(4)(a) - Not decided
Points Of Interest
- 1. The opponent complained about the examination of the mark in suit but the Hearing Officer decided that that was not a matter to be considered in his decision.
- 2. The opponent filed samples of its goods but did not submit them formally as exhibits. Not considered by Hearing Officer.
Summary
The opponent Philips owns registrations in Classes 7 and 11 for the mark ESSENCE and it claimed that the applicant's goods were similar to its goods. Philips also claimed use of its mark in relation to a range of electrical and kitchen utensils which it claimed extended into Classes 7, 9, 11 and 21. Turnover figures for the years 1999 to 2001 ranged from £440k to £898k and advertising costs during this period totalled some £223k.
Under Section 3(1)(a) the Hearing Officer decided that this ground had been confused with a claim to ownership of the mark in suit under Section 5 and that it had no merit. Opposition dismissed
Under Section 3(6) – bad faith – the opponent complained about the vague wording and breadth of the applicant’s specification but filed no evidence to support this ground. Opposition dismissed.
The ground under Section 5(1) was dismissed because, as the respective goods were in different Classes, they could not be identical.
The essential ground of opposition was under Section 5(2)(b) and as the respective marks were identical the Hearing Officer carefully compared the list of goods in the respective specifications. He considered that the applicant’s specification contained a number of goods which were similar to the opponent’s goods and that the application could only proceed if such goods were excluded. A period of time was allowed for the applicant to request the necessary restriction.
Under Section 5(4)(a) the Hearing Officer decided that the opponent was in no better position under this ground as compared to Section 5(2)(b). No formal decision made.