Trade mark decision

BL Number

O/262/08

Decision date

26 September 2008

Hearing officer

Mr D Landau

Mark

16PF 16PFS

Classes

09, 16, 41, 42

Applicant

Institute for Personality & Ability Testing Inc

Opponent

Psytech International Limited

Opposition

Section 3(1)(b) (c) & (d)

Result

Section 3(1(b): Opposition successful. Section 3(1)(c): Opposition successful. Section 3(1)(d): Opposition successful.

Points Of Interest

• As described

Summary

The opponent’s opposition was based on a claim that the mark in suit fell foul of the requirements of Section 3(1) and therefore should not be registered.

Both parties filed a significant amount of evidence and this is summarised by the Hearing Officer in some detail at pages 21 to 49 of his decision. However, when considering this evidence in the context of his decision he observed that a lot of the evidence was copied from proceedings at the Community trade mark office and had not been put in witness statement form for these proceedings. Also the evidence in some cases came from persons who had a relationship with the parties and was somewhat contradictory in places. Survey evidence filed by the applicant was dismissed as worthless and the Hearing Officer decided to give more weight to evidence form persons not associated with the parties or involved in their disputes.

Over many years a Raymond Cattell developed a list of personality tests and through a process of factor analysis identified 16 factors which he believed were basic personality dimensions. This became known as the Sixteen Personality Factor (16PF) and was first published in 1949 by the Institute for Personality and Ability Testing Inc.

The Hearing Officer identified the relevant average consumer as someone working for a company that undertakes phychometric testing and he was clear that the average relevant consumer would know that 16PF (one of the marks in suit) stands for sixteen personality factor.

In this dispute the applicant claimed to own the rights to the personality testing system 16PF and to have used the mark for a number of years. On the other hand the opponent claimed that others have used the term and that it is in the public domain. In the Hearing Officer’s view the fact that the relevant average consumer would know that 16PF identified the sixteen personality test, meant that 16PF was not capable of identifying the services of one particular undertaking from those of another. He went on to conclude that registration would be contrary to Section 3(1)(b), (c) & (d).

As regards the mark 16PF5 the Hearing Officer thought that this mark would be seen merely as a variation or extension of 16PF and thus not distinctive in the context of 3(1)(b). However, it would not be barred from registration by 3(1)(c) or (d).

The Hearing Officer went on to consider whether or not the marks in suit had acquired a distinctive character because of the use made of them. The relevant turnover and promotion figures filed in support of the applications were modest and there was no indication of market share to place the figures in a meaningful context. In any case these were descriptive and non-distinctive marks and there was no evidence to show that they identified a particular undertaking. Mere use of descriptive marks does not necessarily make them distinctive. Opposition successful.