Trade mark decision

BL Number

O/181/04

Decision date

24 June 2004

Hearing officer

Mr D Landau

Mark

MERLIN

Classes

36

Applicant

SVM Asset Management Limited

Opponent

Merlin Biosciences Limited

Opposition

Sections 5(1); 5(2)(a) & 5(4)(a)

Result

Section 5(1) - Opposition partially successful.

Section 5(2)(a) - Opposition partially successful.

Section 5(4)(a) Opposition partially successful.

Points Of Interest

• 1. Evidence; Comparison of goods/services: “Where there are services or goods whose nature is not readily understood or known, an opponent needs to bring in evidence in relation to them.

Summary

The opposition was based on the opponents’ registrations, in Classes 35 and 36, and use of their mark MERLIN.

Dealing first with the opposition under Section 5(1) the Hearing Officer found some of the services specified in the application to be identical with those in the opponents’ registration. The opposition under Section 5(1) succeeded accordingly in respect of those services.

The Hearing Officer’s consideration of the matter under Section 5(2)(a), required a detailed analysis of the respective services. The evidence which could have helped in this, however was 'noticeable by its absence'; in this case it was not simply a matter of 'buns versus bread'. In the result the Hearing Officer found some of the services to be similar and he concluded that there existed a likelihood of confusion in respect of those services.

Under Section 5(4)(a) the Hearing Officer again found for the opponents in respect of some of the services specified. In view of the limited nature of the opponents' success however the Hearing Officer made an award of costs in favour of the applicants.

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