Trade mark decision

BL Number

O/313/05

Decision date

30 November 2005

Hearing officer

Mr M Reynolds

Mark

Smartstore

Classes

12

Registered Proprietor

Tyrrell Automotives Ltd

Applicant for a declaration of invalidity

smart GmbH

Application for invalidation

Section 47(1) (citing Section 3(6)); 47(2)(a) (citing Section 5(2)(b)) & Section 47(2)(b) (citing Section 5(4)(a)).

Result

Application for a declaration of invalidity, Section 47(2)(a) (citing Section 5(2)(b): - Successful.

Application for a declaration of invalidity, Section 47(2)(b) (citing Section 5(4)(a): - Successful.

Application for a declaration of invalidity, Section 47(1) (citing Section 3(6)): - Unsuccessful.

Points Of Interest

• 1. Comparison of the marks SMART v SMARTSTORE.
• 2. Parallel imports; effect on reputation.

Summary

The application for invalidation was based on a number of registrations of marks consisting of or incorporating the word SMART, all registered in Class 12, inter alia. Thus identical goods were involved. The two areas of disagreement were the level of similarity between the respective marks and the reputation attaching to the applicant's mark by reason of use.

In considering the reputation arising from use, the Hearing Officer concluded that the parallel imports which had taken place during a period of 3/4 years prior to the official launch of the applicant's SMART CAR in the UK should be taken into account. What mattered was the effect on consumer perception, not whether the sales were authorised or unauthorised. After comparing the respective marks and the goods the Hearing Officer found a likelihood of confusion and the application under Section 47(2) (Section 5(2)(b)) succeeded.

The Hearing Officer also found the applicant successful under Section 5(4)(a).

However, due to a lack of clarity as to the precise nature of the attack under Section 3(6), which had remained despite various opportunities for clarification, the Hearing officer would not find for the applicant under that head.