Trade mark decision

BL Number

O/008/06

Decision date

6 January 2006

Hearing officer

Mr G Salthouse

Mark

ICE MOUNTAIN

Classes

25

Applicant

Craigdon Limited

Opponent

Gilmar S.P.A.

Opposition

Section 5(2)(b)

Result

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

Points Of Interest

• The evidence filed by the applicant showed that it used its mark in a style somewhat different from that applied for but the form used did not increase the risk of confusion with the opponent’s marks.

Summary

The opponent based its opposition under Section 5(2)(b) on five registered marks in Class 25 in respect of identical and similar goods as those of the applicant. Three of these marks consist of the word ICEBERG, one within a line border and two with devices of icebergs and other wording. The remaining two consist of the word ICE and device of a human figure and the words SPORT ICE and device of an iceberg.

The opponent also filed evidence of use of its registered ICEBERG mark (without the line border) and the unregistered mark ICE JEANS ICEBERG. The turnover figures for both marks showed reasonable use but the supporting documentation was not well focused in that the range of goods was not clearly specified and many of the exhibits were undated. Use was also claimed in respect of the marks ICE JEANS, ICE J and ICE B but such use was not quantified. Overall the Hearing Officer decided that the evidence filed was insufficient to conclude that the marks of the opponent had an enhanced reputation.

The applicant also filed some evidence. It stated that it had commenced to use its mark in the year 2000, some two years before application, and no confusion had occurred. It also submitted that the respective goods were different, as its goods were for skiing, climbing and mountaineering, and that the respective marks were not similar.

Under Section 5(2)(b) the Hearing Officer noted that taking account of the respective specifications, identical and similar goods were at issue. As regards the respective marks he considered that the opponent’s strongest case resided in its ICEBERG mark and he compared this mark with the mark in suit ICE MOUNTAIN. As both marks commence with the word ICE the Hearing Officer accepted that there was some aural and visual similarity but the marks were conceptually different and overall he did not think they would be confused by the public. Opposition failed on this ground.

As regards the opposition under Section 5(4)(a) - Passing Off - the Hearing Officer accepted that the opponent had some goodwill in its ICEBERG and ICE JEANS ICEBERG marks but he did not think that these marks were sufficiently similar to the mark in suit for misrepresentation to occur. Even if the opponent had a separate reputation in the mark ICE, which the Hearing Officer doubted, he also considered that this mark and the mark in suit were not confusingly similar. Opposition failed on this ground.