Trade mark decision

BL Number

O/296/06

Decision date

19 October 2006

Hearing officer

Mr G Salthouse

Mark

WHEELS 'R' US

Classes

12, 37, 42

Applicant

Wheels ‘R’ Us Limited

Opponent

Geoffrey Inc

Opposition

Sections 5(2)(b), 5(3), 5(4)(a) & 56

Result

Section 5(2)(b): Opposition partially successful in respect of Class 12 goods. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed.

Points Of Interest

• None

Summary

The opponent relied on a number of prior registrations but these were reduced to BIKES ’R’ US, BIKES” R” US (with the R reversed), “R”US (with the R reversed) and TOYS ’R’ US (with the R reversed). The opponent also filed evidence of use of its marks BIKES ”R” US (with the R reversed) and TOYS ”R” US (with the R reversed) though the evidence was not particularly well focused or detailed.

The applicant, in its specifications, excluding goods for use in relation to bicycles and related goods and the opponent queried whether or not such a qualification was acceptable. The Hearing Officer determined that the wording of the restriction was acceptable.

Under Section 5(2)(b) it was agreed that the opponent’s best case rested on its marks “R” US and BIKES ”R” US (both with the R reversed). When the Hearing Officer compared the respective specifications he concluded that identical and similar goods were covered by the respective Class 12 specifications. While the Hearing Officer accepted that the opponent’s marks were inherently distinctive he rejected the opponent’s claim that through use of their TOYS ”R” US mark the “R”US (with the R reversed) element had become distinctive through use. When he compared the respective marks the Hearing Officer considered that there were a number of similarities and taking account of the goods at issue there was a likelihood of confusion. Thus the opponent was successful in respect of certain goods in Class 12.

The Hearing Officer went on to find that the opponent failed in its ground under Section 5(4)(a) because there was insufficient evidence to show that its reputation extended into automobile goods and that there would be thus be misrepresentation.

With regard to the ground under Section 5(3) the Hearing Officer concluded that the opponent had not proved a reputation in any mark other than TOYS ”R” US (with the R reversed) in relation to the sale of toys and the Hearing Officer did not think that this reputation would extend to goods or services which were not similar. Opposition failed on this ground.

The Section 56 ground also failed.