Trade mark decision

BL Number

O/330/03

Decision date

31 October 2003

Hearing officer

Mr M Reynolds

Mark

TEXT

Classes

25

Applicant

Gill Knitwear

Opponent

Next Retail Limited

Opposition

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

Result

Section 5(2)(b): - Opposition failed.

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

Points Of Interest

• Costs: The applicants did not admit at the outset that the opponents had a reputation in their mark; then complained about the amount of evidence filed by the opponents. The Hearing Officer ignored this complaint and on the facts reduced the award of costs to the applicants by £400.

Summary

The opponents opposition was based on their ownership of a number of registrations of their mark NEXT in respect of identical goods. They also submitted evidence to show that they had a substantial reputation in their mark.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks TEXT and NEXT. In so doing he also considered a claim by the opponents that in use the applicants used a typeface similar to that used by the opponents and both marks were presented on a black background. Even taking account of the opponents reputation in their mark and the slight resemblance of typeface presentation, the Hearing Officer concluded that the respective marks were visually, phonetically and conceptually different. Opposition failed on this ground.

The opposition also failed under Section 5(4)(a) as the Hearing Officer considered that the opponents case was no stronger under that Section as compared to Section 5(2)(b).

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URL: http://www.bailii.org/uk/cases/UKIntelP/2003/o33003.html