Trade mark decision

BL Number

O/124/00

Decision date

5 April 2000

Hearing officer

Mr A James

Mark

SUIT EXPRESS

Classes

25

Applicant

Speciality Retail Group Plc

Opponent

Expressco Inc

Opposition

Sections 3(1)(b) & (c) Sections 5(2)(b) & 5(4)(a)

Result

Sections 3(1)(b) & (c) - Opposition failed

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. In considering opposition under Section 5(2)(b), the Hearing Officer ignored the opponent's other cited registered marks since full details had not been filed.
• 2. Observed in relation to opposition under Section 5(4)(a) that retailers based outside the UK, who positively attract sufficient UK visitors so as properly to regard the UK as part of their catchment area, eg hypermarkets based around French Channel posts, may be able to show they have a business and goodwill in the UK.

Summary

Objection under Section 3 found to lack real substance, the facts being readily distinguished from those in Siemens' Application (the XPRESSLINK case) in that the trade mark in suit denoted nothing about any characteristic of the goods themselves, and in any event it was not even descriptive of a tailoring service in the absence of evidence to that effect, which might have pointed to a lack of the distinctive character needed to function as a trade mark for tailored clothes.

Opposition under Section 5(2)(b) was based on (a) opponent's claim that their mark "Express" was entitled to protection as a well-known mark under the Convention, and (b) on their registered UK trade mark "Exp Express and device". As for (a), the Hearing Officer found no basis for objection, the "Express" mark having not even achieved a reputation, let alone met the requirement of being well-known, since on the evidence it was not known to a significant proportion of the relevant (UK) public. As for (b), he found no likelihood of confusion, even in respect of identical goods, since the common word "Express" in the two marks had a relatively weak distinctive character, which would not suggest trade source association, particularly in light of other substantial visual differences. The small possibility of aural confusion did not suggest a likelihood of confusion. Opposition under Section 5(2)(b) therefore dismissed.

Opposition under Section 5(4)(a) also failed since the Hearing Officer was not persuaded that the opponent had a business and goodwill in the UK, notwithstanding evidence of some UK residents purchasing goods in the opponent's stores in the USA, but in any event there was no evidence of misrepresentation.

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