Trade mark decision

BL Number

O/246/07

Decision date

24 August 2007

Hearing officer

Mr M Foley

Mark

MECCA

Classes

09, 28, 29, 30, 31, 32, 35

Applicant

Taoufik Mathlouthi

Opponent

Rank Leisure Holdings Ltd

Opposition

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

Result

Section 5(2)(b): Opposition successful in respect of some goods in Class 28. Section 5(3): Not considered.

Points Of Interest

• None

Summary

The opponent owns registrations for the mark MECCA in Classes 41 and 42 in respect of, respectively, betting and gaming services and restaurant café and catering services. Its opposition relates only to Classes 28, 29, 30 & 32.

The opponent filed extensive evidence to show that it has used its mark over many years in relation to bingo, slot machines and more recently, internet gambling. It operate at 117 sites where it also provides a range of food and drinks to its clients. The Hearing Officer accepted that the opponent had an enhanced reputation in its mark in relation to its gaming and gambling activities.

Under Section 5(2)(a) the Hearing Officer noted that essentially identical marks were at issue and went on to compare the respective goods and services. Insofar as Class 28 as concerned the Hearing Officer decided that games and playthings included goods which could be used in the opponent’s gambling establishments and thus must be considered similar and complementary to such services. Opposition succeeded in respect of such goods.

As regards the goods of Classes 29, 30 and 32 the Hearing Officer was not convinced that these goods were similar to the opponent’s restaurant and café services and opposition failed in respect of these Classes.

Application allowed to proceed for classes 9, 29, 30, 31, 32 and 35 and for a restricted specification in Class 28.

Section 5(3) ground not considered.