Trade mark decision

BL Number

O/284/05

Decision date

24 October 2005

Hearing officer

Mr M Foley

Mark

GYMLOCKER

Classes

25

Applicant

Levy & Sons Limited

Opponent

FL Europe Holdings Inc

Opposition

Sections 5(2)(b), 5(3), 5(4)(a) & 6(1)(c)

Result

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

Section 5(3): - Opposition failed.

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

Section 6(1)(c): - Opposition failed.

Points Of Interest

• 1. None.

Summary

The opponents' principal ground of objection was in respect of their mark FOOT LOCKER registered in Class 25 in respect of identical and similar goods as those of the applicants. The opponents also claimed extensive user of their mark in the UK from 1991 onwards and estimated turnover figures of $43.560 million for the year 2000 increasing to $90.180 million by the year 2002. They also provided details of a market survey which indicated some recognition of their mark. The applicants also filed evidence to explain that their mark GYMLOCKER is a minor mark and is always used in association with their house mark BLUE INC.

Under Section 5(2)(b) the Hearing Officer noted that identical and similar goods were at issue and went on to compare the respective marks GYMLOCKER and FOOT LOCKER. While both marks incorporate the word LOCKER the Hearing Officer considered that as totalities they were visually and phonetically distinguishable. While there was some conceptual similarity because of the presence of the word LOCKER, the Hearing Officer considered the respective marks to be sufficiently different for the public not to be confused as to origin of the respective goods or to assume brand extension. Overall the Hearing Officer considered that the respective marks were not confusingly similar.

As regards the opponents' evidence of use the Hearing Officer considered it to be ill focused and lacking in relevant details. Even the market survey evidence was open to criticism and did not meet the criteria as set down in reported High Court Cases. At best the evidence suggested that the opponents had a reputation in their mark but too much had to be inferred and many questions remained unanswered. Overall the evidence did not prove that the opponents had an enhanced reputation in their mark and even if it had, the Hearing Officer concluded that the respective marks were sufficiently different for there to be no confusion of the public. Opposition thus failed on the Section 5(2)(b) ground.

The opponents also failed on the Sections 5(3), 5(4)(a) and 6(1)(c) grounds because the Hearing Officer was uncertain as regards the opponents' claimed reputation and because he considered the respective marks not to be confusingly similar.