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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> STERISHIELD (Trade Mark: Invalidity) [2007] UKIntelP o00607 (5 January 2007)
URL: http://www.bailii.org/uk/cases/UKIntelP/2007/o00607.html
Cite as: [2007] UKIntelP o607, [2007] UKIntelP o00607
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STERISHIELD (Trade Mark: Invalidity) [2007] UKIntelP o00607 (5 January 2007)
For the whole decision click here: o00607
Trade mark decision
- BL Number
- O/006/07
- Decision date
- 5 January 2007
- Hearing officer
- Mr M Foley
- Mark
- STERISHIELD
- Classes
- 02
- Applicant for Invalidation
- Liquid Plastics Limited
- Registered Proprietor
- Imperial Chemical Industries Ltd
- Invalidation
- Section 47(1) & (2) based on Sections 3(1)(a) (b) & (c), 5(2)(b) & 5(3)
Result
Section 47 based on Sections 3: Invalidation application failed. Section 47 based on Section 5(2)(b): Invalidation application failed. Section 47 based on Section 5(3): Invalidation application failed.
Points Of Interest
- The applicant appealed to the Appointed Person. In her decision dated 14 September 2007 (BL O/274/07) the Appointed Person upheld the Hearing Officer's decision and dismissed the appeal.
Summary
The mark replied upon by the applicant for invalidation had been on the Register for a number of years so the registered proprietor requested that it proved use of its mark in the five years period prior to the application. Such proof was provided but only in relation to “Coatings in the nature of paints”.
As regards the ground under Section 3 the Hearing Officer accepted that the mark in suit had some descriptive characteristics but STERI is not a recognised abbreviation and SHIELD is not the normal descriptive term used in relation to coatings and paints. In combination the mark was not without distinctive character and was properly registered.
Under Section 5(2)(b) the Hearing Officer noted that identical and/or closely similar goods were at issue. As regards the respective marks STERI is a somewhat descriptive term for the goods at issue while SHIELD and SHEEN are well known words with their own meanings. Overall the Hearing Officer considered that the respective marks were not confusingly similar and that the application failed on this ground.
As the marks were not similar the application also failed on the Section 5(3) ground.