Trade mark decision

BL Number

O/334/07

Decision date

9 November 2007

Hearing officer

Mr M Foley

Mark

tua (stylised)

Classes

18

Applicant

Braccialini Srl

Opponent

Tula Bags Ltd

Opposition

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

Result

Section 5(2)(b): Opposition successful. Section 5(4)(a): Opposition successful.

Points Of Interest

• None

Summary

The opponent’s opposition was based on its ownership of the mark TULA registered in Class 18 in respect of identical and similar goods as those of the applicant.

The opponent also filed evidence of use of its mark which shows that it has generally been used in a stylised script, not unlike that used by the applicant for its mark. The evidence filed proves use of the TULA mark on an extensive scale over a number of years in relation to a range of Class 18 goods and the Hearing Officer accepted that this use satisfied the proof of use provisions and enhanced the reputation of the TULA mark.

Under Section 5(2)(b) the Hearing Officer compared the respective marks tua (stylised) and TULA. He accepted that if both marks were used in plain block capitals then they were distinguishable but the mark as applied for was in a type of script and the opponents mark was also used in script form. Also the marks were similar aurally. Overall the Hearing Officer considered that when used in relation to identical goods, as here, the public could well be deceived as to origin or assume a connected enterprise. Opposition succeeded on this ground.

The opponent was also successful on the Section 5(4)(a) ground. It had a reputation and goodwill in its mark at the relevant date and the marks had been found to be similar under Section 5(2)(b). It followed that there could be misrepresentation and damage if the applicant was to use its mark.