Trade mark decision

BL Number

O/301/00

Decision date

21 August 2000

Hearing officer

Dr W J Trott

Mark

PEBBLE BEACH

Classes

25

Applicant

ISA (International Shoe Agencies) Limited

Opponent

Pebble Beach Company, California

Opposition

Sections 3(6), 5(1), 5(2), 5(3) and 5(4)

Result

Opposition succeeded under Section 5(2)(a) and failed on all other grounds

Points Of Interest

• Despite Registry’s past view that boots, shoes and sandals are not goods of the same description as any other specifically listed articles of clothing (except for slippers) the Hearing Officer concluded that in the circumstances of the case there existed a likelihood of confusion between footwear and articles of sports clothing.

Summary

The opponents (PB) had a registration of PEBBLE BEACH in Class 25 covering various items of clothing. PB was engaged, inter alia, in the licensing of the name PEBBLE BEACH to other manufacturers and traders wishing to take advantage of the name’s association with golf. The Hearing Officer found that the allegation of bad faith (Section 3(6)) was not supported by any evidence. The objections under Sections 5(3) and 5(4) were not supported by evidence of a reputation in the UK. Under Section 5(1) the Hearing Officer concluded that the opposition was partially successful - if “a sub-set of the opponents’ articles of sports clothing is identical to a sub-set of the applicants’ goods (footwear for sports purposes).” The Hearing Officer did not rule on this, however, and went on to find, under Section 5(2)(a), that the marks were identical and the goods similar, and there existed a likelihood of confusion on the part of the public.

---

BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII
URL: http://www.bailii.org/uk/cases/UKIntelP/2000/o30100.html