Trade mark decision

BL Number

O/122/08

Decision date

30 April 2008

Hearing officer

Mrs J Pike

Mark

iSms

Classes

09

Applicant

ICX Europe Limited

Opponent

Italtel SpA

Opposition

Section 5(2)(b)

Result

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

Points Of Interest

• None

Summary

The opponent owns a registration for the mark IMSS in four classes including Class 9 which is the class of the application in suit. The application in suit is in respect of “encoded telephone cards in Class 9” and the Hearing Officer decided that these goods were very similar to the goods included in the opponent’s Class 9 registrations.

Both parties filed evidence in these proceedings but this relates to the particular activities of the two parties and also that there had been some modest concurrent use, for a very short period, of the marks in suit. This evidence was of little assistance to the Hearing Officer who concluded that the conflict under Section 5(2)(b) had to be decided on a comparison of the goods in the respective specifications and a comparison of the respective marks.

As noted above similar goods were at issue and the Hearing Officer thus compared the respective marks iSmg and iMSS. The Hearing Officer decided that the respective marks have considerable visual and aural similarity and that there was some conceptual similarity because both commence with the letter I followed by letters. Overall the Hearing Officer concluded that the respective marks were confusingly similar and that the opponent was successful in its opposition under Section 5(2)(b).