Trade mark decision

BL Number

O/232/08

Decision date

11 August 2008

Hearing officer

Mr M Foley

Mark

TECHNICALS

Classes

18, 20, 22, 25

Applicant

Outdoor Group Limited

Opponent

Tecnica SpA

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): Opposition successful in respect of certain goods in Classes 18 & 25. Section 5(3): Opposition failed. Section 5(4)(a): Opposition successful in respect of certain goods in Class 25.

Points Of Interest

• The opponent’s marks were somewhat stylised but recognisable as the word TECNICA.

Summary

The opponent’s opposition was based on its ownership of a registration for the mark TECNICA in Class 25 in respect of “Ski, mountain and aprés-ski footwear and sports footwear in general”. The opponent also filed details of use of its mark from 1982 onwards, particularly in relation to ski-boots, some associated goods and sports footwear. Some advertising and promotion also took place but the information relating to such expenditure was not well focused. Overall the Hearing Officer accepted that the opponent had a reputation in its mark in relation to ski-boots and associated accessories and tools for such goods.

Under Section 5(2)(b) the Hearing Officer compared the respective marks TECNICA and TECHNICALS. He considered the two marks to have visual and aural similarities. Conceptually it was likely that consumers would associate both marks with the word TECHNICAL and again there was similarity. Overall the Hearing Officer considered the marks to be similar. As regards a comparison of the respective goods in classes 18 and 25 (the only Classes opposed in these proceedings) the Hearing Officer decided that goods such as backpacks, shorts, bags etc for use in outdoor pursuits (Class 18) were similar to the registered goods in Class 25. A range of named goods in Class 25 were identical and similar. The Hearing Officer concluded overall that the similarity of marks and goods could lead to confusion of the public and that opposition was successful in this ground in respect to a range of goods in Classes 18 and 25.

As regards the ground under Section 5(3) the Hearing Officer decided that the evidence filed was insufficient to establish that the mark TECNICA was known to a significant proportion of the relevant purchasers of goods in Classes 18 and 25, outside of its core business in skiing goods. Therefore, this ground was dismissed in view of the decisions made under Section 5(2)(b).

Under Section 5(4)(a) the Hearing Officer accepted that the opponent had a significant reputation and goodwill in relation to the sale of ski footwear and associated goods. He considered that this goodwill would extend, into the outdoor clothing field in particular and that opposition succeeded on this ground in respect of such goods.