Trade mark decision

BL Number

O/300/00

Decision date

21 August 2000

Hearing officer

Dr W J Trott

Mark

AMPLIFIBER

Classes

09

Applicants

Pirelli Cavi e Sistemi SpA

Opponents

The Whitaker Corporation

Opposition

Sections 5(2)(b) and 5(4)

Result

Section 5(2)(b) - Opposition failed

Section 5(4) - Opposition failed

Points Of Interest

• 1. A "family of marks" is not a factor which has much relevance in deciding a dispute under Section 5(2) though it may be relevant under Section 5(4). ENER-CAP trade mark [1999] RPC 362.
• 2. When comparing marks, even where one has a reputation, there must be a real likelihood of confusion rather than a mere possibility, for the marks at issue to be considered "confusingly similar".

Summary

The opponents opposition was based essentially on their ownership of and reputation in, their AMP mark. They also claimed use of a family of AMP/AMPLI marks but while they have a number of such marks registered in Class 9, no conclusive evidence was filed to show that such marks were in use in the marketplace. Despite the fact that the Hearing Officer accepted that the opponents had a reputation in their AMP mark and that identical goods were at issue, the Hearing Officer concluded that the respective marks AMP and AMPLIFIBER were conceptually, phonetically and visually different and therefore not confusingly similar. A comparison under Section 5(2) was also made with AMPLIVAR, another of the opponents registered marks, but again the Hearing Officer concluded that the respective marks were not confusingly similar.

In the light of his findings under Section 5(2) the Hearing Officer dealt only briefly with Section 5(4). Again he decided that the opponents failed in their opposition.

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