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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> MARCH FORMULA ONE (Trade Mark: Opposition) [2007] UKIntelP o28607 (28 September 2007)
URL: http://www.bailii.org/uk/cases/UKIntelP/2007/o28607.html
Cite as: [2007] UKIntelP o28607
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MARCH FORMULA ONE (Trade Mark: Opposition) [2007] UKIntelP o28607 (28 September 2007)
For the whole decision click here: o28607
Trade mark decision
- BL Number
- O/286/07
- Decision date
- 28 September 2007
- Hearing officer
- Mr M Reynolds
- Mark
- MARCH FORMULA ONE
- Classes
- 09, 16, 25, 35
- Applicant
- March Holdings Ltd
- Opponent
- Formula One Licensing BV
- Opposition
- Sections 3(6), 5(2)(b), 5(3), 5(4) & 56
Result
Section 6(3): Opposition failed. Section 52(b): Opposition successful. Sections 5(3), 5(4) & 56: Not considered.
Points Of Interest
- See also BL O/287/07
Summary
The opponent own a number of UK and CTM marks incorporating the elements FORMULA 1 and owns a CTM for the mark FORMULA 1 in respect of a range of Classes including Classes 9, 16, 25 and 35. These Classes cover identical and closely similar goods as those of the applicant and the Hearing Officer concluded that the opponent’s best case rested on this registration.
As regards the ground under Section 3(6) the opponent filed evidence which had little relation to the way the ground was pleaded in its opposition. Consequently, the Hearing Officer decided that the applicant had no case to answer and that opposition failed on this ground.
Under Section 5(2)(b) the Hearing Officer compared the respective marks FORMULA 1 and MARCH FORMULA ONE and considered that the FORMULA 1/ONE elements were essentially identical. While he was somewhat concerned at the generic nature of the term FORMULA 1 he accepted that the evidence showed that others recognised it as the mark of the opponent and that the opponent licensed its use. Therefore, confusion was likely as the relevant public would assume that the applicant had licensed the mark from the opponent when this is not the case. Opposition succeeded on this ground.
Other grounds not considered.