Trade mark decision

BL Number

O/098/00

Decision date

14 March 2000

Hearing officer

Mr A James

Mark

LE SHARK & DEVICE

Classes

25

Applicant

Le Shark Ltd

Opponent

Reebok International Ltd

Opposition

Sections 5(2) and 3(6)

Result

Section 3(6) - Opposition failed

Section 5(2)(b) - Opposition failed

Points Of Interest

• Survey evidence : Hearsay evidence from an informal survey admitted under Civil Evidence Act 1995, though no weight attached to it due to shortcomings of the survey.

Summary

Opponents had registered a device mark (stripecheck II) in Class 25 covering footwear and items of clothing, and had successfully opposed registration of the device element of the present mark. The Hearing Officer was "in little doubt" that present application inspired by impending opposition to earlier application, but decided that adoption of composite mark, in such circumstances, to avoid confusion in use, did not involve bad faith (Section 3(6)), especially since device element not given added prominence.

At the hearing, applicant limited the specification of goods in Class 25 to "outer clothing, but not including footwear" but this did not avoid a clash of identical goods under Section 5(2). The Hearing Officer decided that, despite identical goods being at issue, the average consumer would not be misled into believing goods bearing mark in suit were connected with the opponent, especially since the Hearing Officer could not infer from Opponents’ evidence of extensive worldwide promotion and sales that they had any significant UK reputation in the stripecheck II device mark (solus) for clothing.

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URL: http://www.bailii.org/uk/cases/UKIntelP/2000/o09800.html