Trade mark decision

BL Number

O/406/99

Decision date

18 November 1999

Hearing officer

Mr M Reynolds

Mark

INVESCO THE GLOBAL INVESTMENT MANAGER

Classes

36

Applicants

Amvescap Plc

Opponents

Investcorp S.A.

Opposition

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

Result

Section 5(3) - Not pursued

Section 3(6) - Opposition failed

Section 5(3)(b) - Opposition succeeded as same services at issue and marks confusingly similar

Points Of Interest

• 1. Prior registration of different marks offer only limited assistance to an applicant. Use of a particular mark must be fully substantiated.
• 2. The applicants appealed the decision reached by the Hearing Officer under Section 5(2)(b) to the Appointed Person. In his decision dated 14 April 2000 (SRIS O/246/00) the Appointed Person upheld the Hearing Officer’s decision.

Summary

Opposition based on the opponents registered mark INVESTCORP. The applicants own registrations of the marks INVESCO and O device, and INVESCO, Your Global Investment Partner & O device set in a black background. They also had substantial use of the mark INVESCO. The Hearing Officer decided that the comparison of the respective marks was essentially between INVESCO and INVESTCORP and he decided that the marks were similar both visually and phonetically. There was also conceptual similarity. Prior registrations and claimed use, which was not sufficiently substantiated, were not sufficient reasons for the Hearing Officer to revise his view of the marks at issue.

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URL: http://www.bailii.org/uk/cases/UKIntelP/1999/o40699.html