Trade mark decision

BL Number

O/004/05

Decision date

7 January 2005

Hearing officer

Mr G Salthouse

Mark

WATSONS

Classes

05, 35, 42

Applicant

C K Yeung

Opponent

Watson Enterprises (Bahamas) Limited

Opposition

Section 5(2)(b)

Result

Section 5(2)(b): - Opposition successful.

Points Of Interest

• 1. None

Summary

The opponent’s opposition was based on its ownership of a Community registration of the mark Watson's, a device and Chinese characters in Classes 3, 5 and 42. The opponent filed evidence from the internet which showed that there are ten pharmacies in the UK trading under the name WATSON but no-one else had applied to register a mark containing that name in relation to pharmacy services or products.

The applicant also filed evidence of use of its mark and claimed the benefit of the honest concurrent use provisions of Section 7.

Under Section 5(2)(b) the Hearing Office compared the goods and services of the applicant with those of the opponent and noted that identical and very similar goods and services were at issue. As regards the respective marks the Hearing Officer noted that both marks contained the word WATSON and Watson's, very similar Chinese characters and the only real difference lay in the respective device elements. The Hearing Officer concluded that the respective marks were similar since both would likely be remembered as consisting of an English surname combined with Chinese characters.

In relation to the applicant's honest concurrent use claim the Hearing Officer noted that the evidence filed by the applicant was not well documented but even assuming there had been use by the applicant the opponent had filed no details of use of its mark. There was therefore no concurrent use to consider in the terms described in Section 7 of the Act.

In summary the Hearing Officer concluded that in the context of Section 5(2)(b) of the Act there was a likelihood of confusion of the public and that opposition on this ground succeeded.