Trade mark decision

BL Number

O/006/05

Decision date

10 January 2005

Hearing officer

Mr G Salthouse

Mark

ROBERT

Classes

09, 16, 38

Applicant for Invalidity

Roberts Radio Limited

Registered Proprietor

Deutsche Telekom AG

Invalidation

Section 47(2)(b) based on Section 5(4)(a)

Result

Section 47(2)(b) based on Section 5(4)(a): - Invalidity action failed.

Points Of Interest

• 1. None

Summary

The applicant for invalidation claimed substantial use of its mark ROBERTS from 1932 onwards in relation to radio receiving sets and more recently in relation to clock radios, CD clock radios and cassette clock radios. Evidence of such use was filed by the applicant who claimed 15% market share of these latter goods by 2003. The applicant also filed evidence which showed that it was common for firms in this area of trade, such as Panasonic, Philips and Sony Ericsson, to offer mobile phones in addition to their range of audio equipment.

The registered proprietor also filed evidence relating to the dispute with the applicant and pointed to the fact that it had excluded certain goods from its Class 9 registration in order to avoid the applicant’s field of activity. This exclusion, as amended, now reads:

"But not including radio and television receiving sets and parts and fittings therefore and similar goods to radio and television receiving sets and parts and fittings, and not including radios for receiving and reproducing sound broadcasts and/or audio hi-fi apparatus".

The registered proprietor confirmed that its main area of interest was in relation to mobile phones and that it was not currently using its mark.

Under Section 5(4)(a) the Hearing Officer accepted that the applicant had an extensive reputation in relation to radios and associated goods. He compared these goods with those of the registered proprietor in Classes 16 and 38 and concluded that the respective fields of activity were far apart and there was no likelihood of misrepresentation or confusion of the public. As regards Class 9 the exclusion to the registered proprietor’s specification had to be taken into account. Assuming normal and fair use by the registered proprietor the Hearing Officer concluded that while the respective marks were very similar and that the respective goods could be purchased from similar retail outlets by members of the public, he did not believe that the public would assume that the respective goods emanated from connected firms. There would therefore be no misrepresentation. The application for invalidity therefore failed.