Trade mark decision

BL Number

O/255/04

Decision date

20 August 2004

Hearing officer

Mr M Reynolds

Mark

homeprotect

Applicant

NHI Services Limited (previously webmoney Ltd)

Opponent

Eversheds

Opposition

Sections 3(1)(a) (Section 1(1)); 3(1)(b): 3(1)(c) & 3(3)(b)

Result

Section 3(1)(a) - Opposition failed.

Section 3(1)(b) - Opposition failed.

Section 3(1)(c) - Opposition failed.

Section 3(3)(b) - Opposition failed.

Points Of Interest

• 1. Section 3(1)(c): syntactically unusual juxtaposition of non-distinctive elements.
• 2. Section 3(3)(b): deception unlikely in view of the nature of the insurance market.

Summary

The Hearing Officer could see no basis for a finding that the mark failed the "minimum threshold test" under Section 1(1)/3(1)(a); that objection was dismissed accordingly.

Because much of the opponents’ evidence was intended to establish that the mark consisted of elements that serve in trade to designate characteristics of the services, the Hearing Officer turned next to a consideration of the matter under Section 3(1)(c). This was a case “at the margins” but in the final analysis the Hearing Officer thought that the “syntactically unusual juxtaposition” of the component elements of the mark rendered it capable of serving as a badge of origin. The opposition under Section 3(1)(c) failed. The Hearing Officer was unable to find that the mark was devoid of distinctive character and the Section 3(1)(b) also failed.

Under Section 3(3)(b) the Hearing Officer found, in essence, that the nature of the insurance market was such that deception was very unlikely to arise in practice; no one would subscribe to a motor insurance policy, say, in the belief that they were getting some form of home insurance. This objection failed also.

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URL: http://www.bailii.org/uk/cases/UKIntelP/2004/o25504.html