Trade mark decision

BL Number

O/264/08

Decision date

29 September 2008

Hearing officer

Mr C Bowen

Mark

SNOTEEZE

Classes

05, 16

Applicant

Louise Cooper

Opponent

Passion for Life Healthcare Limited

Opposition

Section 5(2)(b)

Result

Section 5(2)(b: Opposition successful.

Points Of Interest

• Use in the UK sufficient to meet proof of use provision of a Community trade mark.

Summary

The opponent’s opposition was based on its ownership of a Community registration of the mark SNOREEZE in Class 5 in relation to a range of pharmaceutical preparations and substances. The opponent also claimed user from May 2000 and filed evidence of use from 2003 onwards. Turnover was in excess of £2m in 2003 and reached £3.4m in 2005. Promotion and advertising was in the range £75k to £450k.

The applicant also filed evidence in which she attempted to show that the marks were not similar and that the respective goods would be sold in different sales areas in stores.

Under the proof of use provisions the Hearing Officer accepted that use in the UK was sufficient to meet the proof of use provisions of a Community trade mark. However, he noted that the user had been solely in respect of “preparations for the alleviation of snoring” and that this would be the specification considered in these proceedings.

Under Section 5(2)(b) the Hearing Officer compared the applicant’s goods “Tissues impregnated with medicated preparations” and “Tissues” with the opponent’s goods “Preparations for the alleviation of snoring”. As preparations can be impregnated into tissues the Hearing Officer concluded that the respective Class 5 goods were similar and went on to conclude that tissues (Class 16) were also similar to the opponent’s goods.

As regards the respective marks SNOTEEZE and SNOREEZE the Hearing Officer considered that there was visual, aural and conceptual similarities and taking into account the similarity of goods, that there was a likelihood of confusion. Opposition thus succeeded.