Trade mark decision

BL Number

O/044/05

Decision date

21 February 2005

Hearing officer

Mr D Landau

Mark

Bbi

Classes

06, 09, 11, 19, 27, 37, 42

Applicant

Beacons Business Interiors Limited

Opponent

BBI Business Interiors Limited

Opposition

Sections 5(2)(b) & 5(4)(a) [App No 2295265] Section 5(2)(b) [App No 2345225]

Result

Application No 2295265

Section 5(2)(b): - Opposition failed

Section 5(4)(a): - Opposition failed

Application No 2345225

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

Points Of Interest

• 1. Acquiescence: A useful review of the factors to be taken into account.

Summary

The opponent (hereafter referred to as Business) owns registrations for the marks BBI and bbi (series of 2) in respect of furniture goods in Class 20 and BBI Business Interiors and bbi Business Interiors (series of 2) in respect of services in Classes 37 and 42.

Business also filed details of use of its mark from 1989 onwards and the Hearing Officer concluded from the evidence filed that Business had a reputation and goodwill in the mark bbi in conjunction with various other indicia such as the company name or the place of business. This goodwill resides in Business's services in relation to the fitting out of offices and the interiors of businesses. There was no evidence of use of the mark(s) in relation to items of furniture.

The applicant (hereafter referred to as Beacons) also filed evidence of use of its mark. It provides the same services as Business and has used the mark applied for from approximately 1989 but always in conjunction with the other matter such as the company name or location of the business. It provided no evidence of use of its mark in relation to the goods claimed in Classes 6, 9, 11, 19 and 27. Beacons also claimed acquiescence but this claim was dismissed as the mark applied for was not in fact the mark used and in the case of the goods claimed, it had no use prior to the date of application.

Under Section 5(2)(b) the Hearing Officer decided that the respective marks, which consisted of the same letters Bbi and bbi were very similar and in the case of application No 2345225, where identical services were at issue, there was a likelihood of confusion and opposition thus succeeded on this ground in respect of that application.

In respect of application No 2295265 where Beacons has applied for goods in Classes 6, 9, 11, 19 and 27 the Hearing Officer decided that the goods of Business, furniture in Class 20, were not similar to the goods applied for by Beacons. He then went on to do an extensive comparison of the goods of Beacons with the services of Business and decided that they were not similar. Opposition under Section 5(2)(b) thus failed in respect of application No 2295265.

The opposition under Section 5(4)(a) was in respect only of application No 2295265. Here the Hearing Officer took account of the marks as actually used by the two parties. Taking account of the differences in the marks and of the differences in the goods and services of the two parties the Hearing Officer concluded, in the absence of specific evidence on the points, that Business had not established a likelihood of passing off. Opposition on this ground failed.