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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> PINNACLE (Trade Mark: Invalidity) [2003] UKIntelP o28803 (23 September 2003) URL: http://www.bailii.org/uk/cases/UKIntelP/2003/o28803.html Cite as: [2003] UKIntelP o28803 |
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For the whole decision click here: o28803
Result
Section 3(6) - Invalidity action dismissed.
Section 5(2)(b) - Invalidity action failed.
Section 5(3) - Invalidity action dismissed.
Section 5(4)(a) - Invalidity action successful.
Points Of Interest
Summary
The registered mark is registered in respect of "Residential and commercial long distance telephone services; internet access services" whereas the applicant owns registrations for the mark PINNACLE (and variations thereof) in Class 36 in respect of insurance services. The applicant filed evidence to show that their marks have been used for many years and have a significant reputation in relation to insurance services. They also use the internet to promote and carry on their business and have also promoted their marks by way of the sponsorship of sporting events.
The Hearing Officer dismissed the grounds under Sections 3(6) and 5(3) since the applicant filed no evidence in support of these grounds.
Under Section 5(2)(b) the Hearing Officer accepted that the respective marks were similar but the services were so different that there was no likelihood of confusion.
Under Section 5(4)(a) the Hearing Officer noted that the applicant had a reputation in their PINNACLE marks and that their use of the internet to promote and carry on their business was significant since the registered proprietor provided internet access services. In such circumstances a number of users might assume a connection between the two businesses and the applicant could therefore suffer damage. The invalidity action thus succeeded on this ground.
