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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 >> TECHNO THE IDEAL HOME GIRL T.E.C. (Trade Mark: Opposition) [2006] UKIntelP o05006 (14 February 2006) URL: http://www.bailii.org/uk/cases/UKIntelP/2006/o05006.html Cite as: [2006] UKIntelP o5006, [2006] UKIntelP o05006 |
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For the whole decision click here: o05006
Result
Section 3(6): Opposition successful. Section 5(2)(b): Opposition successful Classes 35 & 41 partially successful Class 16. Section 5(3): Classes 16 & 41. Section 5(4)(a): Not considered.
Points Of Interest
Summary
Nine applications and oppositions are at issue in these proceedings. While not consolidated the evidence filed in each case was essentially the same and the Hearing officer has issued only one decision.
The opponent filed evidence to show that it has a significant reputation in the mark IDELA HOME in respect of magazines which deal with the home, home decoration, design, lifestyle etc. It claimed that this reputation extended into television programmes which cover similar subjects. The opponent also owns a number of registrations for the mark IDEAL HOME (and variations thereof) in respect of goods in Class 16 and services in Classes 35 and 41.
The applicant also filed evidence to support a claim that it owns the name IDEAL HOME LIMITED and that it had registered a number of companies within the Ideal Home Group. The marks in suit are said to have been used in advertising and promotion but little evidence was filed to back up this claim. Indeed the opponent had filed evidence from company records to show that no trading returns were filed for the years 1999 and 2000. The application was filed in February 2002. The applicant also claimed that others used the words IDEAL HOME but there was no evidence from the marketplace that this was the case. The only other proved user was the long established DAILY MAIL IDEAL HOME EXHIBITION.
In his decision the Hearing Officer had to deal with preliminary matters relating to the acceptance of some of the opponent’s evidence and also the fact that two of the opponent’s marks had been revoked subsequent to the date of filing of the applications for registration. In this latter case the Hearing Officer decided that such marks could be taken into account in the proceedings.
Under Section 5(2)(b) the Hearing Officer compared the respective goods and services and noted that while there was identical services at issue in Classes 35 and 41, some of the respective goods in Class 16 were different. In comparing the respective marks the Hearing Officer accepted that words “speak louder” than devices and he believed that the word IDEAL HOME appearing in the applicant’s marks would be viewed as a prominent element and there was also conceptual similarity between the respective marks. Overall the marks were confusingly similar and the opponent was successful in respect of Classes 35 and 41 and part of Class 16.
Under Section 5(3) the Hearing Officer noted that the opponent had proved its reputation in its mark in respect of its Class 16 goods and associated goods and services. This provided sufficient justification to find that registration of the applicant’s marks in respect of dissimilar goods in Class 16 and dissimilar services in Class 41 would harm the opponent’s mark and effect its reputation. Opposition successful in this ground in respect of goods in Class 16 and services in Class 41.
The ground under Section 3(6) was essentially one of “bad faith” and the opponent had made a number of allegations to the effect that the applicant was attempting to trade on the opponent’s reputation. The applicant had failed to rebut the allegations and had failed to say why it had adopted the marks in suit. Opposition succeeded on this ground.
Section 5(4)(a) - Passing Off - not considered in view of decisions in respect of other grounds.
