Trade mark decision

BL Number

O/286/08

Decision date

17 October 2008

Hearing officer

Mr C Bowen

Mark

02GO

Classes

32

Applicant

Jonathan Yates

Opponent

O2 Holdings Limited

Opposition

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

Result

Section 5(2)(b): Opposition successful. Section 5(3): Not considered. Section 5(4)(a): Not considered.

Points Of Interest

• Importance of pleadings and counterstatement. Paragraphs 34-43.

Summary

The opponent’s opposition was based on its ownership of two prior Community applications for the marks O2 and O2 which have been accepted but not yet registered, which cover identical goods as those of the application. The opponent also filed evidence to substantiate its reputation in the telecommunications field and this reputation was acknowledged by the applicant.

Under Section 5(2)(b) the Hearing Officer considered that the opponent’s best case resided in its O2 mark and he compared this mark in some detail with the applicant’s O2GO and device mark. The device element appears between the letter O and numeral 2 and is said to represent a “greater than” sign but as it is circular could equally be seen as mere decoration. The word GO appearing in the applicant’s mark is often used to refer to goods that are to be drunk or consumed “on the go” and this view is reinforced in this case where it is preceded by the numeral 2 to read 2GO. That said the Hearing Officer did not think that the O2 element would be overlooked by the average consumer and considered the marks to have some visual similarity and a significant degree of aural similarity. While there is little conceptual similarity the Hearing Officer considered that overall there was a likelihood of direct confusion or confusion in the context that the applicant’s goods emanated from an undertaking linked to the opponent. Opposition succeeded on this ground.

In view of his decision under Section 5(2)(b) the Hearing Officer saw no need to consider the grounds under Sections 5(3) or 5(4)(a) but in passing observed that the opponent’s reputation in its core goods was some distance from the goods at issue here. In the absence of appropriate evidence it was likely that the opponent would fail on these grounds.

The Hearing Officer also dealt with the opponent’s submissions that because the applicant had simply denied that the respective marks were not similar in his counterstatement, and had not denied the opponent’s claims under Sections 5(3) and 5(4)(a), then as the respective marks had been found to be similar, the opponent should succeed in respect of these two grounds without further ado. The Hearing Officer noted that the Counterstatement had been completed when the applicant was acting on his own behalf although later he was professionally represented. While pleadings and denials should always be clearly made the applicant had made no admissions and in a case where there might be ambiguity it was not permissible to make assumptions as the opponent submitted in this case. Thus there was a specific need to file evidence in support of its grounds under Sections 5(3) and 5(4)(a).

Final decision not given until the opponent’s Community Trade Mark applications proceeds to registration.