Trade mark decision

BL Number

O/264/04

Decision date

1 September 2004

Hearing officer

Mr M Reynolds

Mark

SIXKILLER

Applicant

Kevin Payne & Susanna Kelly

Opponent

Fronsac Investment SA

Opposition

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

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. As per summary

Summary

The opponents owned a number of registrations for the marks MISS SIXTY, SIXTY (within a line border), KILLAH (slightly stylised) and device and KILLAH BABE and device in respect of the same and similar goods as those of the applicants. The opponents also filed details of use of the marks SIXTY and MISS SIXTY from 1993 onwards and of the mark KILLAH from 1999 onwards. Details of use of this latter mark were not well documented and the Hearing Officer was unable to conclude that the mark had an enhanced level of distinctiveness. However, he considered KILLAH and device an inherently distinctive mark.

Under Section 5(2)(b) the opponents relied only on their KILLAH registrations and submitted that KILLAH was simply a corruption of the word "Killer". The Hearing Officer refused to accept this view of the KILLAH mark without evidence to support such a claim and went on to compare it with the applicants’ mark SIXKILLER which he viewed as an invented word. Overall the Hearing Officer concluded that the respective marks were not similar.

A second matter under Section 5(2)(b), which had not been in the pleadings, was the fact that the mark applied for combined the idea of the opponents’ two marks SIXTY and KILLAH and that therefore this would lead to confusion, particularly within trade sources. The Hearing Officer refused to accept this ground as it had not been pleaded but also considered that the ground failed because the mark applied for could only be compared with each of the opponents’ marks on an individual basis. On this basis the respective marks were not similar.

With regard to the ground under Section 5(4)(a) – Passing Off – the Hearing Officer examined the evidence of use carefully to establish if there was any linkage of trade under the marks SIXTY and KILLAH. The evidence filed as regards use was somewhat sketchy but it showed a separate trade under the marks SIXTY and KILLAH and they appeared together on only one invoice. In view of the differences in the respective marks this was totally insufficient to support a case of likely confusion among retail consumers or indeed trade sources. Opposition failed on this ground.