Trade mark decision

BL Number

O/338/06

Decision date

30 November 2006

Hearing officer

Mr G Salthouse

Mark

TOUCHWOOD

Classes

35, 36

Applicant

Lend Lease Europe Limited

Opponent

W H Mason & Son (Timber Merchants) Limited

Opposition

Sections 3(6) & 5(2)(a) & (b)

Result

Section 3(6): Opposition failed. Section 5(2)(a): Opposition successful. Section 5(2)(b): Opposition successful.

Points Of Interest

• It transpired from the evidence that the applicant operated retail parks but not actual establishments.

Summary

The applicant applied for a range of services including advertising and property development in Class 35 and also, essentially, retailing services. The opponent who owned the mark TOUCH WOOD in respect of goods in Class 20 objected to the inclusion of retailing services in the applicant’s specification as it claimed that the respective marks were identical or similar and that retailing services and its Class 20 goods were similar. The opponent also claimed that it had investigated the applicant’s activities which it said were essentially property development and submitted that this cast doubt on its claim to provide or intention to provide retail services. Thus the terms of Section 3(6) applied.

Under Section 5(2)(a) the Hearing Officer determined that the respective marks were identical and went on to find that the goods of the opponent and the retailing services of the applicant were similar. The opponent was thus successful under Section 5(2)(a). In the event that the respective marks were considered similar under Section 5(2)(b) then the result would also favour the opponent.

As regards the objection under Section 3(6) the Hearing Officer concluded that the opponent had failed to substantiate its claim and it therefore failed on this ground.