Trade mark decision

BL Number

O/330/04

Decision date

2 November 2004

Hearing officer

Mr G Salthouse

Mark

MAILSOURCE

Classes

16, 20, 35, 36, 38, 39, 41, 42

Applicant

Die Schweizerische Post

Opponent

Royal Mail Group Plc

Opposition

Sections 3(1)(b) & (c) & 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(1)(b) & (c) - Opposition failed Section 5(2)(b) - Opposition partially successful Section 5(3) - Opposition partially successful Section 5(4)(a) - Opposition partially successful

Section 5(2)(b) - Opposition partially successful

Section 5(3) - Opposition partially successful

Section 5(4)(a) - Opposition partially successful

Points Of Interest

• The opponent appealed to the Appointed Person but subsequently entered into negotiations with the applicant and an agreement was reached. The Appointed Person issued his decision dated 20 July 2006 (BL O/206/06) in the light of this agreement and directed:
• 1. That the decision of the Hearing Officer (this decision) be set aside.
• 2. that the opponent’s appeal stands withdrawn.
• 3. Opposition No 71025 (this opposition) stands withdrawn.
• 4. The case be remitted to the Registrar for further processing.

Summary

The opponent based its opposition on the ownership of registrations of the mark MAILSORT in Classes 38 and 39. It also filed evidence of extensive use of this mark from 1987 and the Hearing Officer accepted that it was a distinctive mark in relation to "postal services and computer software".

Under Section 5(2)(b) the Hearing Officer compared the respective marks MAILSORT and MAILSOURCE and concluded that they were similar both phonetically and conceptually and that the relevant consumer could well assume that the marks emanated from linked undertakings. The Hearing Officer then went on to compare the respective goods and services of the applicant with the services of the opponent. He concluded that there was only a similarity between the respective services in Class 39 and that opposition succeeded in respect of such services. Services not similar in the applicant’s Class 39 application could remain.

Under Section 5(4)(a) the Hearing Officer noted that the opponent had proved use in respect of computer software and he therefore concluded that in addition to the restriction of the Class 39 specification proposed under Section 5(2)(b) the applicant would have to restrict its Class 42 application by excluding "computer programming and rental of computer software relating to postal services".

Under Section 5(3) the Hearing Officer essentially concluded that the opponent was in no better position as compared to Sections 5(2)(b) and 5(4)(a) and arrived at a similar conclusion.

With regard to the grounds under Section 3(1)(b) and (c) it was accepted that neither of the words MAIL or SOURCE were particularly distinctive but combined the mark was not without distinctive character and it did not appear to be the normal way of describing the goods or services of the application. Opposition failed on this ground.