Trade mark decision

BL Number

O/354/06

Decision date

7 December 2006

Hearing officer

Mr M Foley

Mark

STERITROX

Classes

03, 05, 07, 09, 11

Applicant

Ozone Systems Limited

Opponent

Sterilox Technologies Inc

Opposition

Section 5(2)(b)

Result

Section 5(2)(b): Opposition successful. Application allowed to proceed for a restricted specification in Class 7.

Points Of Interest

• The opponent appealed to the Appointed Person re the allowance of a restricted Class 7 application. In her decision dated 16 July 2007 (BL O/199/07) the Appointed Person allowed the appeal and refused the mark in suit in its entirety.

Summary

In these proceedings the opponent relied upon an earlier registered mark STERILOX registered, inter alia, in respect of goods in Classes 5, 9 and 10 and services in Class 37.

The applicant filed state of the Register evidence in an attempt to show that STERI is a common element in marks used in respect of the goods at issue. It also filed details of the particular goods on which the mark is used and also a comparison with the opponent’s goods, obtained via an internet search. The Hearing Officer did not find this evidence helpful and noted that he had to compare the goods and services listed in the respective specifications.

Under Section 5(2)(b) the Hearing Officer compared the respective marks STERITROX and STERILOX and concluded that they were similar in appearance and sound and that they were conceptually similar. As regards the respective goods and services the Hearing Officer decided that identical and similar goods were at issue, also similar goods and services. Overall the Hearing Officer decided that the opposition under Section 5(2)(b) succeeded.

Prior to the hearing the applicant submitted a restricted application by deleting Classes 3 and 5 and restricting the specification of the Classes 7, 9 and 11. After consideration the Hearing Officer agreed that the application could proceed only in Class 7 for a specification which he proposed.