Trade mark decision

BL Number

O/135/05

Decision date

16 May 2005

Hearing officer

Mr G Salthouse

Mark

Mdem

Classes

16, 39, 41, 42

Applicant

Helen Hyde

Opponent

Reed Midem Organisation S.A.

Opposition

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

Result

Section 5(2)(b): - Opposition successful in respect of Application No 2269373.

Section 5(2)(b): - Opposition failed in respect of Application No 2269371.

Section 5(4)(a): - No formal finding in respect of Application No 2269373.

Section 5(4)(a): - Opposition failed in respect of Application No 2269371.

Points Of Interest

• 1. MIDEM v m.d.e.m (etc); similar, likelihood of confusion.
• 2. MIDEM v m.d.e.m (etc) stylised; not similar, no likelihood of confusion.

Summary

The opposition to these two applications was based on registrations of the marks MIDEM and Midem (stylised), in Classes 16, 35, 38 and 41. The applicant, attacking the alleged inherent distinctiveness of the opponent’s mark, contended that it was meaningful as the name of a music festival and as an acronym derived from the full name of that festival in France. Any alleged inherent distinctiveness of the MIDEM mark had been destroyed by its descriptive use in relation to that festival. The Hearing Officer did not accept any of these contentions.

Comparing the goods/services the Hearing Officer found them to be either identical or to have various degrees of similarity.

In his comparison of the marks the Hearing Officer took first the application for the series of four marks m.d.e.m/mdem/M.D.E.M/MDEM and compared this with the opponent’s mark MIDEM; he found them to be visually and aurally similar. Going on to compare that application with the opponent’s mark MideM (stylised and with the letter’d’ represented as a musical note), he again found a degree of similarity.

However, when he compared these marks with the applicant’s second mark m.d.e.m, in which the letters were separated by, in turn, a dot, a triangle and a square, he found them to be not similar. In the result, therefore, he found the opposition under Section 5(2)(b) to have succeeded in respect of one of the applications, but to have failed in respect of the second.

As the opposition had succeeded in respect of one application the Hearing Officer did not include it in his deliberations under Section 5(4)(a).

Noting that the opponent had not provided evidence of use or reputation and goodwill in the mark, the Hearing Officer also observed that as he had already found that use of the applicant’s mark would not result in confusion, the necessary misrepresentations would not occur.

The opposition under Section 5(4)(a) failed