Trade mark decision

BL Number

O/196/98

Decision date

12 October 1998

Hearing officer

Mr M Knight

Mark

WISDOM CONTOUR

Classes

21

Applicant

Wisdom Toothbrushes Limited

Opponent

The Gillette Company and Oral-B Laboratories (a division of Gillette Canada Inc)

Opposition

Section 5(2), 5(3) and 3(6)

Result

Sections 3(6): - Opposition failed.

Section 5(2): - Opposition failed.

Section 5(3): - Opposition failed.

Points Of Interest

• 1. In parallel opposition proceedings under the Trade Marks Act 1938 (as amended) the Hearing Officer allowed the opponents mark CONTURA in Class 21 to proceed to registration in the face of opposition by the applicants - based on their WISDOM CONTOUR mark.
• 2. Both decisions were appealed to the High Court.
• On appeal to the Court of Appeal Mr Justice Laddie's decision was upheld. (15 November 2000)

Summary

The opponents opposition in this case was based on their ownership and use of a number of CONTOUR marks in Class 8 in respect of shaving apparatus and a prior application in Class 21 for the mark CONTOURA. They claimed a significant reputation in the marks CONTOUR and CONTOUR PLUS and said the applicants attention had been drawn to their prior rights. In parallel proceedings involving the applicants opposition to the opponents CONTURA mark in Class 21 the applicants claimed that the marks CONTURA and WISDOM CONTOUR were confusingly similar; also in use the applicants use the mark applied for with the CONTOUR element predominating. The opponents, therefore, questioned the applicants intention to use the mark applied for.

Under Section 3(6) the Hearing Officer concluded that the opponents had filed insufficient evidence to convince him that the applicants application was made in bad faith.

Under Section 5(2) the Hearing Officer considered the respective goods in Class 8 - shaving apparatus - with those in Class 21 - Toothbrushes - in some detail and concluded that they were not in fact similar. However, he went on to compare the respective marks CONTOUR and WISDOM CONTOUR and came to the conclusion that they were confusingly similar. The Hearing Officer also compared the respective marks CONTURA and WISDOM CONTOUR in respect of the same goods in Class 21and concluded (as he had in the parallel proceedings) that they were not confusingly similar.

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