Trade mark decision

BL Number

O/280/07

Decision date

24 September 2007

Hearing officer

Mr G Salthouse

Mark

Device of a bullseye (claims to colours red & white) Device of a bull’s eye

Classes

09, 16, 35, 38, 41

Applicant

Music Choice Limited

Opponent

Target Brands Inc

Opposition

Sections 3(6), 5(1), 5(2)(b), 5(3), 5(4)(a) & Article 6 bis of the Paris Convention

Result

Section 3(6): Opposition failed. Section 5(1): Opposition failed. Section 5(2)(b): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

• 1. See also related case BL O/281/07 (Invalidation)
• 2. See costs award under BL O/281/07 which are well in excess of the normal scale costs.

Summary

The opponent in these proceedings owns a CTM consisting of a bull’s eye device and the word TARGET in Classes 35 & 42. The opponent also filed extensive evidence in an effort to show that its bull’s eye device is well known in the UK even though it has no trading outlets in the UK and it is not possible to order tools from its internet site for delivery in the UK. Thus its evidence tended to relate to the effects of tourism, advertisements in magazines which may circulate in the UK and placement in TV programmes and films. It is accepted that the TARGET and bull’s eye device mark is very well known in the United States.

The opponent also claimed that the applicant had appropriated its mark even though the applicant filed evidence to show that its mark had been devised by a firm of brand consultants who specialise in developing marks and logos.

The applicant also filed evidence to show that it is in a different field of activity as compared to the opponent and that due to conflict with another party it is not allowed to trade in the USA. Its area of activity is Europe and Israel. Representatives of both parties were cross-examined at the Hearing but this does not appear to have added much to the documentary evidence.

The grounds under Section 3(6) (appropriation), 5(3), 5(4)(a) and Article 6 bis were dropped just prior to the Hearing.

Under Section 3(6), intention to use, the Hearing Officer noted that the applicant had filed a prospectus in later evidence which showed its intended range of activities. While the specifications claimed are in broad terms the Hearing Officer decided that they are not outside the range of normal claims. Opposition on this ground refused.

The ground under Section 5(1) was dismissed because, quite obviously, the respective marks are not identical or nearly so.

Under Section 5(2)(b) the Hearing Officer compared the services listed by the applicant in Class 35 with the opponent’s services in Classes 35 and 42. In the Hearing Officer’s view the applicant’s services relating to the sale of goods by internet, television channels etc were not similar to the services of the opponent which related mainly to the setting up of retail department stores. He went on to compare the applicant’s bull’s eye device with the opponent’s TARGET and bull’s eye device. Taking account of the fact that the word TARGET is the dominant element in the opponent’s mark and that in the UK a bull’s eye device might be seen and referred to as an RAF device, a roundel, bull’s eye or target device, there was only a degree of similarity. Taking account of the respective services there was no likelihood of confusion of the public and opposition failed on this ground.

With regard to the ground under Section 5(4)(a) the Hearing Officer concluded that as the opponent had no sales in the UK it had no goodwill on which to base its passing-off claim and the presence of Americans in the UK who might be aware of the TARGET and device mark did not assist. In any case, as found under Section 5(2)(b) the respective marks are not very similar. Opposition failed on this ground.