Trade mark decision

BL Number

O/072/06

Decision date

15 March 2006

Hearing officer

Mrs A Corbett

Mark

REMYS

Classes

25

Applicant

Remy’s Limited

Opponent

Douglas & Grahame Limited

Opposition

Sections 5(2)(b) & 5(3)

Result

Section 5(2)(b) Opposition successful. Section 5(3): Opposition failed.

Points Of Interest

• Under the 1938 Act proof of first use would have been a determining factor in deciding an opposition but the matter is somewhat different under the 1994 Act.

Summary

The opponent in these proceedings owned four registrations in Class 25 of the marks REMUS and REMUS UOMO in respect of identical and similar goods. The opponent also claimed user of its marks from 1992 but such use was not well focused or documented. The Hearing Officer was unable to assume that such use enhanced the distinctiveness of its marks.

The applicant also filed evidence of use of its mark REMYS; use being claimed from 1997. Again the details of use were not very specific although the Hearing Officer accepted that there had in fact been trade mark use of the marks in suit.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks. She concluded that REMYS and REMUS were aurally similar and that overall there was a likelihood of confusion. Because the word UOMO is the Italian word for “man” and was likely to be recognized as such the Hearing Officer decided that REMYS and REMUS UOMO were also similar. In reaching this decision the Hearing Officer concluded that the applicant’s evidence was insufficient to be a relevant factor in considering the possibility of confusion between the respective marks.

The ground under Section 5(3) was dismissed because the evidence filed was insufficient to show that the opponent had a reputation in its marks.

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