Trade mark decision

BL Number

O/128/07

Decision date

14 May 2007

Hearing officer

Mr G Salthouse

Mark

DigiPos DigiPos ( series of 2 marks for app 2358344) DigiPos (one mark for app 2375901) DigiPos DIGIPOS (series of 2 marks for app 2375900) DigiPos Digipos DIGIPOS (series of 3 marks for app 2358343)

Classes

09, 37, 42

Applicant

International Retail Solutions Group Limited

Opponent

Digi International Inc

Opposition

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

Result

Section 5(2)(b): Opposition successful. Section 5(3): Not considered. Section 5(4)(a): Not considered.

Points Of Interest

• The applicants evidence of use did not assist as it was not established that it was concurrent with that of the opponent.

Summary

The four applications were filed on different dates, as were the oppositions, which have been consolidated. There are small differences in the oppositions, particularly as regards the filing of the evidence by the opponent. However, nothing turns on these minor differences though the Hearing Officer highlights them.

The opponent is the owners of six prior marks one of which had expired at the date of the hearing and one which was still pending. These marks are as follows:

Digi & device (Class 9), Digi Portserver (Class 9 - expired), DIGI INTERNATIONAL (Class 9), DIGIBOARD (Class 9), DIGI & device (Classes 9, 37 & 42) pending CTM) and DIGI INTERNATIONAL (Classes 9, 37 & 42 CTM).

The opponent also filed details of when it first used its marks and turnover figures for the year 2005 (which is after the relevant date). The opponent claims to have traded in the UK for the past fourteen years with an expected turnover of £3M in 2005. It also states that both companies are in the same area of trade.

The applicant also filed details of use of its marks and provides turnover figures form the year 2000. By 2004 turnover had increased to £7M per annum. The applicant also states that DIGI is a common prefix and that there are a large number of marks in Class 9 with this prefix.

With regard to “proof of use” requirement the Hearing Officer was not satisfied that the opponent had provided sufficient proof in relation to its DIGI INTERNATIONAL and DIGIBOARD marks and thus these marks would not be considered under Section 5(2)(b).

Under Section 5(2)(b) the Hearing Officer determined that identical goods were at issue and services similar to goods were also at issue. As regards the respective marks the opponent accepted that its best case rested on its Digi and device mark and the Hearing Officer concentrated on the comparison of this mark with the marks in suit. It was also common ground that POS is well recognised by the relevant industry as meaning “point of sale”. The Hearing Officer went on to find the respective marks similar and the opponent was successful under Section 5(2)(b).

The grounds under Sections 5(3) and 5(4)(a) were not considered but the Hearing Officer observed that the absence of acceptable evidence of use would have made it difficult for the opponent to justify its opposition under these grounds.