Trade mark decision

BL Number

O/253/04

Decision date

18 August 2004

Hearing officer

Mr J MacGillivray

Mark

118551

Applicant

The Number UK Limited

Opponent

British Telecommunications Plc

Opposition

Sections 3(1)(b); 3(1)(c); 3(1)(d); 3(3)(a); 3(3)(b) & 3(6)

Result

Section 3(1)(b) - Opposition failed.

Section 3(1)(c) - Opposition failed.

Section 3(1)(d) - Opposition failed.

Section 3(3)(a) - Opposition failed.

Section 3(3)(b) - Opposition failed.

Section 3(6) - Opposition failed.

Points Of Interest

• 1.

Summary

The mark applied for was one of a series of numbers prefixed 118 allocated by OFTEL for use in connection with directory enquiry services. The opponent had been allocated the number 118500.

The Section 3(6) objection was quickly dismissed by the Hearing Officer as no case in support of it had been made out.

The Hearing Officer then turned to a consideration of the matter under Section 3(1). A numeral could operate as a trade mark; it could indicate the services of a particular provider; it was 'bi-functional' and having been allocated by OFTEL it was not one which other traders could or should wish to use in relation to the goods or services; in the particular market at issue, the customer was in fact able to distinguish between the competing 118…..numbers. The mark met the requirements of Section 3(1)(c) and that ground of opposition failed accordingly. The opponent’s case under Section 3(1)(b) was no stronger and that ground failed also.

Whilst the prefix 118 denoted a DQ number, there was no indication that the full six digit number was customarily used in trade to indicate goods or services other than those of the applicant. The Section 3(1)(d) objection failed accordingly.

Under Section 3(3) the Hearing Officer did not accept that OFTEL would have viewed the allocation of 118…..numbers as inhibiting the ability of any other 118…..number holder from exploiting that number in the market place. These grounds also failed therefore.