Trade mark decision

BL Number

O/216/06

Decision date

2 August 2006

Hearing officer

Mr M Reynolds

Mark

Small Claims R US

Classes

42

Applicant

Work Direct Limited

Opponent

Geoffrey Inc

Opposition

Sections 5(3), 5(4)(a), & Section 56

Result

Section 5(3): Opposition failed. Section 5(4)(a): Not pursued. Section 56: Withdrawn.

Points Of Interest

• None

Summary

The opponent’s opposition was based on its ownership and use of the mark TOYS R US (stylised and with the R reversed). The opponent proved that it had an extensive reputation and goodwill in its mark in relation to the retailing of toys and games.

The application proposed to use its mark in relation to legal services, reviewing and processing small claims, advice on debt recovery etc.

Under Section 5(3) the Hearing Officer accepted that the opponent had the necessary reputation to support this ground of its opposition. He thus compared the respective marks Small Claims R US and TOYS R US (stylised and with the R reversed) and concluded that there was a material degree of similarity despite the difference in the initial elements and the fact that the opponent’s mark is somewhat stylised and with the R reversed.

In the light of the fact that the applicant’s services are some distance from the activities of the opponent, the Hearing Officer went on to consider the likelihood of unfair advantage and detriment if the applicant was to use its mark. The Hearing Officer concluded that it was unlikely that consumers would select a provider of legal advice on the basis that they were reminded of a mark which had a reputation for toy retailing. Likewise he did not see how there could be any detriment to the distinctive character or repute of the opponent’s mark. Opposition thus failed on the Section 5(3) ground.

The Section 56 (well known mark) ground was withdrawn at the hearing and the ground under Section 5(4)(a) was not pursued on the basis it did not raise issues materially different from those dealt with under Section 5(3).