Trade mark decision

BL Number

O/166/05

Decision date

15 June 2005

Hearing officer

Mr G Salthouse

Mark

REDENVELOPE

Classes

35, 42

Applicant

Redenvelope Inc

Opponent

Red Letter Days Plc

Opposition

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

Result

Section 3(6): - Opposition failed. Section 5(2)(b): - Opposition failed. Section 5(3): - Opposition failed. Section 5(4)(a): - Opposition failed.

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

Section 5(3): - Opposition failed.

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

Points Of Interest

• 1. See also BL O/167/05.
• 2. The opponent appealed to the Appointed Person. In her decision dated 29 August 2006 (BL O/250/06) the Appointed Person upheld the Hearing Officer’s decision and dismissed the appeal.

Summary

The opponent is the owner of a RED LETTER mark (series of 3) in respect of a range of goods and services, including Class 42 where identical services to those of the applicant are at issue. The opponent, who trades in special days out as gifts, filed evidence of use of its marks RED LETTER and RED LETTER DAYS and attempted to claim a reputation in relation to red envelopes which are used in some instances in relation to its gifts. The Hearing Officer accepted that the opponent had a reputation and goodwill in relation to the mark RED LETTER DAYS but he concluded that the opponent did not have any significant reputation in its RED LETTER mark or that it could claim a separate and distinct reputation in relation to the packaging of goods or papers in red envelopes.

The applicant also filed evidence and claimed use of its mark from 1997 onwards in relation to the supply and delivery of gifts. Most of its trade prior to application in November 2001 appears to have occurred outside the UK. It referred to the fact that the use of red envelopes and red packaging is widespread in the card and gift field.

Under Section 5(2)(b) the Hearing Officer accepted that identical services were at issue in Class 42 and there was some similarity between the goods of the opponent in Classes 9-33 with the applicant’s services in Class 35. Also there was some similarity between the opponent’s services in Classes 36, 39 & 41 and the services of the applicant in Class 35. The Hearing Officer went on to compare the marks RED LETTER and RED ENVELOPE (this being the opponent’s best case) and concluded that they were not confusingly similar. In the Hearing Officer’s view the marks were visually and phonetically distinguishable and while there was some conceptual similarity there were also conceptual differences. Opposition failed on this ground.

Opposition also failed on the Section 5(3) ground because the opponent had not proved a reputation in its registered mark RED LETTER.

Under Section 5(4)(a) - Passing Off - the Hearing Officer took account of the opponent’s reputation in its RED LETTER DAYS mark in relation to the sale of activity days as gifts. These services were similar to services within the applicant’s Class 35 services but the respective marks RED LETTER DAYS and RED ENVELOPE were not similar. Opposition failed on this ground.

In earlier proceedings between the parties it would appear that both parties had adopted positions in relation to confusability between the respect marks. Overall the Hearing Officer concluded that there had been no bad faith on the part of the applicant in filing its application or in its stance in these proceedings. The opponent failed in its Section 3(6) ground