Trade mark decision

BL Number

O/062/05

Decision date

10 March 2005

Hearing officer

Mr D Landau

Mark

RAiNYSEASON

Classes

25

Applicant

Jalf Bros Limited

Opponent

Outdoor Leisurewear Limited

Opposition

Sections 5(2)(b), 5(4)(a) & 3(6)

Result

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

Section 5(4)(a): - Not considered.

Section 3(6): - Not considered.

Points Of Interest

• 1. None

Summary

The Hearing Officer commented upon the stylization of the mark as advertised – with a lowercase "i" and noted that this appeared to be at odds with the mark depicted on the application form. However, nothing turned on this point and he treated the mark as the word RAINYSEASON.

The opponent (hereafter referred to as Outdoor) owns the mark RAINY DAYS (series of 2) in Class 25 in respect of identical and similar goods as those of the applicant. Outdoor claimed to have adopted the marks RAINY DAYS in February 2002 and claimed a turnover of some £500k in respect of goods sold under the mark up to 23 August 2003 (the date of application of the mark in suit). A sample invoice, sample packaging and a RAINY DAYS branded kagoul were also provided.

Outdoor also referred to the fact that there was a business relationship with the applicant up until early 2003 when it had adopted the mark RAINYSEASON. Thereafter, relations became strained.

The applicant (hereafter referred to as Jalf) claimed in its counterstatement to have used the mark RAINYSEASON from 1992 onwards. It also claimed to have used the mark RAINY DAYS in 1994, 1999-2000 and in 2001. Outdoor was aware of this use when it applied to register its mark on 14 July 2003. Jalf also submitted that the mark RAINYDAYS and RAINYSEASON had the same meaning and were in fact similar. Jalf filed no evidence to support these claims.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks RAINY DAYS and RAINSEASON. He decided that they were conceptually similar and liable to be confused on the basis of imperfect recollection. He also noted the admission made by the applicant that the respective marks were similar. Opposition succeeded on this ground.

In view of his finding under Section 5(2)(b) the Hearing Officer saw no need to consider the grounds under Sections 5(4)(a) and 3(6). He observed, however, that Outdoor’s evidence was such that it was unlikely that it would have succeeded on these latter two grounds.