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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> DK DREAMKIT (Trade Mark: Opposition) [2003] UKIntelP o37803 (3 December 2003) URL: http://www.bailii.org/uk/cases/UKIntelP/2003/o37803.html Cite as: [2003] UKIntelP o37803 |
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For the whole decision click here: o37803
Result
Section 5(2)(b): - Opposition successful.
Section 5(4)(a): - Not decided.
Points Of Interest
Summary
The opponents opposition was based on their ownership of three registrations for the marks DREAMS and one registration for DREAM, in Class 25 in respect of identical goods to those of the applicants. The opponents also claimed use of the mark DREAMS from 1982 onwards and filed evidence in respect of the years 1996 to 2000. While such evidence indicated that use had been significant it was poorly documented and the Hearing Officer was unable to accept that DREAMS had acquired an enhanced reputation through use. The opponents also stated that they had licensed their mark DREAM and royalties of £100,000 had been received. No other details were, however, given.
Under Section 5(2)(b) the Hearing Officer considered that the opponents best case rested on their DREAM registration and he noted that identical goods were involved. Insofar as the applicants mark was concerned he considered the word DREAMKIT to be the prominent element and that the DK logo would encourage consumers to see the word as two elements DREAM & KIT. From papers on file it appeared that the applicants used their mark on items of ladies clothing in the colours of football team kits so the element KIT in the applicants’ mark would be seen as at least semi-descriptive. Also the dictionary definition showed that KIT was a descriptive element in relation to items of clothing. As the opponents’ mark was contained within the word element of the applicants’ mark the Hearing Officer considered the respective marks to be visually, phonetically and conceptually similar. While it was possible to differentiate between the two marks the Hearing Officer believed that consumers would assume that items of clothing sold under the respective marks came from economically linked undertakings. Opposition succeeded on this ground.
In view of his finding under Section 5(2)(b) the Hearing Officer saw no need to consider the Section 5(4)(a) ground. He observed, however, that the opponents were in no better position as compared to the Section 5(2) ground.
