Reported Trade Mark Cases for August 2001

25 August 2001

Katharine Stephens

Registry Decisions

 BL No. Application Earlier Mark Goods/Services Comment
 O/392/00 PETER J GERBER OPTICIANS LTD PETER J GERBER (unregistered) Contact lenses; optical services; eye examination and consultancy (9, 42) Opposition failed under ss3(3)(b) and 3(6). The mark was not inherently deceptive in that it did not give rise to an expectation of a particular kind or quality of goods or services. The continued use of the opponent's name by the applicant and subsequent trade mark application for that name when the opponent had ceased to be a director of or involved with the applicant, did not amount to bad faith.
 O/393/00 IVANA

HOUSE OF IVANA (unregistered)

 Cosmetics and soaps, jewellery, clothing (3, 14, 25) Application for a declaration of invalidity succeeded under ss47(1) and 3(6). The proprietor had a history of attempting to register other people's marks and provided no explanation as to his adoption of this mark. His conduct fell short of acceptable commercial behaviour.
 O/396/00 HIWATT HIWATT (unregistered) Amplifier and speaker boxes; electrical sound effects units (9) Opposition failed under s3(6). The opponent failed to prove that the decision of the Registry to accept the mark was based on false and misleading claims in the evidence of use.
 O/397/00 CAFE MAMBO BAR MAMBO (application; restaurant, bar, nightclub and catering services, class 42) Business management, advisory services concerning franchising (35) Opposition failed under ss 3(1)(b) and 5(2)(b). The mark was not descriptive of franchising services and the opponent's business was not affected by the registration of the applicant's mark, even if the applicant's franchising services might be provided in relation to restaurants and bars. The dissimilarity between the services meant that the opposition failed.
  O/398/00DD DHILLONS (Stylised word series mark)  DHILLON (unregistered) Foods, restaurant and cafe services (29, 30, 42)  Opposition failed under s3(1)(b). The opposition was based on the applicant's mark being a common surname. The inclusion of the letter 'h' within the mark, which differentiated it from the most popular spelling of the surname, was sufficient to allow it to be considered distinctive. A phonetic equivalent of a common surname was registrable unless it was a recognised alternative spelling for that common surname.

PI3MORE (stylised word mark)

  PINMORE (unregistered)  Electronic oil recycler, cleaning and reclamation equipment and installation, repair and maintenance services relating thereto (7, 37)  Opposition succeeded under ss3(6) and 5(4)(a). Even though the success of the opposition under s5(4)(a) resulted from consideration of the unregistered rights of a third party company who had not opposed the application, and the opponents could not show that they had acquired the requisite goodwill themselves, this was not fatal to the opposition.
 O/407/00  WINBACS  BACS  Computer software (9)  Application for a declaration of invalidity succeeded under s5(2)(b). Use of the prefix WIN could be considered to be an abbreviation of "Windows" and therefore implied that the registered proprietor would be providing the applicant's services through a window based system as this was the only differential between the marks.
 O/408/00  YOU'D BUTTER BELIEVE IT (and device)I CAN'T BELIEVE IT'S NOT BUTTER  Butter, margarine, edible fats (29)  Opposition failed under ss 5(2)(b) and 3(3)(b). The opponent's slogan had a low level of distinctiveness and was only entitled to narrow protection as it was derived from a common phrase. One instance of confusion was insufficient to satisfy the hearing officer that there was a likelihood of confusion. The application, although ambiguous, would not deceive the public into thinking that it contained butter, regardless of whether or not that was the case.
 O/413/00  PANACELL  PANASONIC Recording apparatus and wide variety of other goods (9)  Opposition succeeded under s5(2)(b) in relation to goods for which "cell" was descriptive eg. Cellular 'phones and batteries. It also succeeded under s3(6) in relation to the remaining goods because there was no bona fide intention to use the mark on anything other than batteries. The opposition under s5(3) was misconceived and failed.


 ORACLE (computer programs and wide variety of other goods)Electronic apparatus and instruments for measuring temperature and wide variety of similar goods (9).Opposition failed under ss3(6) and 5(2)(b). Computer software and associated services were dissimilar goods to those goods set out in the applicant's specification. Even allowing for the undoubted reputation of the opponent, there was no likelihood of confusion. It was not appropriate to bring an objection under s3(6) on the basis of the opponent's reputation - that was dressing up a relative ground as an absolute ground.
 O/416/00  RELAY  REPLAY  Clothing (25)Opposition failed under s5(2)(b). There was no risk of aural confusion and it was speculative that visual confusion might occur. Even if it did, in the clothing business, close attention was paid to brand names and such confusion would therefore be momentary. There was therefore no risk of confusion.
 O/418/00  REEFREEF BRAZIL (footwear, unregistered rights in clothing)  Clothing (25)Opposition failed under ss3(6), 5(2)(b) and 5(4)(a). The opponent failed to show that the applicant lacked intention to use the mark: The applicant used their mark across the front of t-shirts or other clothing for promotional purposes. In relation to ss5(2)(b) and 5(4)(a), the opponent's reputation was essentially confined to footwear and clothing promoting footwear. They were not therefore able to support an argument that their reputation extended to clothing in any real sense of the word.
 O/425/00  JINI  Application for security for costs by the opponent under s68(3) failed. The registrar could not require the applicant to give security for costs merely because they were a non-UK company. He could exercise his discretion if the party requesting security for costs made out their case. The applicant had substantial assets within the jurisdiction through its subsidiaries. The registrar did not therefore consider it appropriate to exercise his discretion.

1938 Act

Finanical Systems Software (UK) Ltd v. Financial Software Systems Inc (Court of Appeal, Gibson, Chadwick, Keene L.JJ.; 22.03.01)

The Court of Appeal recently considered an application to register the three letters FSS in relation to computer programming and related services in class 42. The Court held that, as the mark merely consisted of three letters which were not pronounceable as a distinguishable acronym and which should be available for use by other traders, it was neither adapted to distinguish nor capable of distinguishing the services of the applicant. The application therefore failed under section 10(2)(a) of the 1938 Act.

Use of the mark prior to the date of the application was insufficient to overcome those objections. In particular, it appeared from the evidence that it was used as an abbreviation of Financial Systems Software, rather than consistently as a trade mark in its own right. Therefore, the application also failed under section 10(2)(b). A separate decision to allow the same mark to be registered in class 9 under the 1994 Act was not necessarily inconsistent with this decision - the evidence of each case was specific to its own facts; in particular nearly 2 years had elapsed between the dates of the applications.

Evidence was not admissible on appeal where the applicant was aware of the additional documents which it sought to be admitted prior to an earlier hearing. The applicant could have sought to obtain them prior to the earlier hearing and only sought to obtain them subsequently when it decided they were relevant.

Written by Katharine Stephens and Rebecca Harrison.