Trade mark decision

BL Number

O/134/05

Decision date

12 May 2005

Hearing officer

Mr M Reynolds

Mark

Smile Creation Cosmetic Dental Clinics

Classes

42

Applicant

Joseph Oliver

Opponent

Arun Amirsinh Darbar

Opposition

Sections 5(2)(b) & 5(4)(a)

Result

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

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

Points Of Interest

• 1. None

Summary

The opponent owns a mark consisting of the words SMILE CREATION and device of a bear in Class 42 in respect of identical services as those of the applicant. The opponent also filed evidence to show that it had adopted the mark in 1989 and had used it widely since that date. The dental surgery in Leighton Buzzard is known by the name SMILE CREATIONS and both it and the mark in suit have been more widely advertised in later years as restrictions on advertising have been eased by the General Dental Council. Witness statements from dental technicians and patients attested to their recognition of both marks.

The applicant also filed evidence. It submitted that the respective marks were different and that in any case the two parties operated in different areas of the trade; in his case 90% of his work related to cosmetic surgery whereas in a local dental surgery under 10% would relate to such work. In later evidence this was disputed by the opponent who specialises in laser dentistry. It said 80% of its work related to cosmetic dental work.

Under Section 5(2)(b) the Hearing Officer noted that he must compare the respective specifications, irrespective as to how or on what services the respective parties used their marks. On that basis identical services were at issue.

As regards the respective marks the Hearing Officer considered the opponent’s logo mark to be highly distinctive, but decided that the evidence of use filed did not enhance this distinctiveness to any significant extent. The words SMILE CREATIONS are a dominant and distinctive element in the mark.

The Hearing Officer went on to compare the respective marks. He noted the many differences and was satisfied that they would not be confused visually. However, both marks had the words SMILE CREATIONS/SMILE CREATION and this meant that they were very similar phonetically and, as regards these word elements, conceptually. Overall he considered that the respective marks were confusingly similar and that opposition succeeded on the Section 5(2)(b) ground.

In view of his decision under Section 5(2)(b) the Hearing Officer saw no need to consider the Section 5(4)(a) ground.