Trade mark decision

BL Number

O/078/08

Decision date

17 March 2008

Hearing officer

Mr D Landau

Mark

GHD

Classes

14, 16, 18, 20, 24, 27

Applicant

Landlord Mortgages Limited

Opponent

Jemella Limited

Opposition

Section 3(6), 5(3) & 5(4)(a)

Result

Section 3(6): Opposition successful. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

• It is unusual for a party, in this case the applicant, not to put its evidence into proper form when advised by the Registry to do so.

Summary

The applicant (LML) registered the domain name ghd.co.uk in 1999, some time before the opponent (JL) commenced trading under its GHD mark in respect of hair care products and associated goods. It owns the domain names GHDHair.com and GHDHair.co.uk. In 2005 JM sought to have LML’s domain name removed from the register of domain names and initially the application was successful but LML appealed and was successful with that appeal.

These proceedings follow on from the domain name conflict with the applicant endeavouring to register its GHD mark in respect of goods not covered by JM’s registrations.

The opponent filed evidence in support of its opposition but this evidence was poorly focused and it was not clear what turnover and promotion of its mark related solely to the UK market. In addition it claimed user in respect of such goods as carrier bags, beach bags, a sarong and single use camera but with little detail as to the context in which they were sold. The Hearing Officer concluded that such goods were essentially promotion goods. Overall the Hearing Officer concluded that the evidence filed was not sufficient to support the grounds of opposition under Section 5(3) and this ground was dismissed.

As regards the ground under Section 5(4)(a) the evidence filed showed that the opponent’s reputation related to hair straighteners and similar goods. The Hearing Officer decided that such goods were some distance from the goods of the applicant and that no damage was likely to occur. Opposition failed on this ground.

The applicant filed a lengthy counter-statement which the Hearing Officer has quoted in full. The applicant also filed other material by way of evidence but refused to put it in a form so as to comply with Rule 55 of the Trade Mark Rules. Consequently the Hearing Officer could take no account of his material which was returned to the applicant.

In its ground under Section 3(6) the opponent pointed to the fact that the applicant is a mortgage provider and cast doubt on its intention to trade in goods in the range of classes included in the application. In its counterstatement the applicant referred to a perceived threat from the opponent and was taking steps to protect its property rights by making the application in suit. There was no confirmation of an intention to use the mark applied for in relation to the goods at issue and the Hearing Officer concluded that the applicant had not shown a firm and fixed intention to use its mark in relation to the goods listed. Opposition succeeded on this ground.