Trade mark decision

BL Number

O/234/03

Decision date

14 August 2003

Hearing officer

Mr M Reynolds

Mark

SINGIRL

Classes

16, 18, 25

Applicant

Nigel Spencer Dawes

Opponent

Miles-Bramwell Executive Services Limited

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): - Opposition partially successful.

Section 5(3): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest

• Costs: Even though both parties had been partially successful, the Hearing Officer deemed it appropriate to award £1000 to the applicant in view of the unfocussed nature of some of the opponents evidence.

Summary

The opponents opposition was based on their ownership of registrations of the marks SIN, SIN A DAY and SIN FREE in a range of Classes including Class 16 where identical and similar goods were at issue. The opponents also claimed use of their marks but in many instances it was difficult to distinguish trade mark use from descriptive use. In practice the mark SIN/S is used in relation to foodstuffs to indicate which goods should be chosen by would-be slimmers or those seeking to stick to a healthy diet. The opponents main mark is the name of their magazine SLIMMING WORLD and while SIN/S is widely used the Hearing Officer was unable to accept that this mark had an enhanced reputation for Section 5(2) purposes or that it had sufficient reputation to found a case under Sections 5(3) and 5(4)(a). In both these latter grounds the Hearing Officer found that the opponents failed in their opposition.

Under Section 5(2)(b) the opponents were more successful. Identical and similar goods were at issue in Class 16 and while the applicant indicated that he was not in the same filed of activity as the opponents he did not seek to restrict his specifications in any way. As regards a comparison of the respective marks SIN and SINGIRL the Hearing Officer noted the descriptive nature of the word GIRL and he considered that if the respective goods were aimed at girl customers there was a likelihood of confusion. Opposition thus succeeded on this ground.

The Hearing Officer noted that the applicant’s Class 16 application contained some goods not identical or similar to those of the opponents. He offered to proceed with that Class for a restricted range of goods and also the Classes 18 and 25 without restriction.

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