Trade mark decision

BL Number

O/122/06

Decision date

11 May 2006

Hearing officer

Mr G Attfield

Mark

vodka O2 RUSH

Classes

33

Applicant for Invalidity

O2 Limited

Registered Proprietor

Philip Maitland

Invalidity

Section 47(2) based on Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 47(2) & Section 5(2)(b): Invalidity action failed. Section 47(2) & Section 5(3): Invalidity action successful. Section 47(2) & Section 5(4)(a): Invalidity action failed.

Points Of Interest

• 1. The applicant also alleged similarity of “get-up” in the nature of bubble devices but the Hearing Officer was unconvinced that its evidence supported such a claim.
• 2. Following the end of the appeal period the registered proprietor contacted the Registrar to say that there had been an error in procedure and requested that this decision be set aside. Request refused, see decision dated 4 January 2007 (BL O/003/07).
• 3. Further decision dated 12 July 2007 (BL O/194/07) in relation to a belated request for an extension of time and for this decision to be set aside. Both requests refused.

Summary

The registered proprietor did not respond when advised of the application for a declaration of invalidity nor did he defend his registration.

The applicant filed details of a number of registrations of its mark O2 and also O2 combined with bubble device elements. It also filed details of extensive use and reputation in the mobile phones sector together with details of its use in relation to sponsorship of sporting events etc. The Hearing Officer accepted that the applicant had a significant reputation in its mark.

Under Section 5(2)(b) the Hearing Officer decided that as the applicant’s registrations were all in relation to the telecommunications industry and the registered proprietor’s goods were alcoholic beverages the respective goods and goods and services were not similar and that invalidity must fail on this ground.

Under Section 5(3) where dissimilar goods and/or services can be taken into account the Hearing Officer noted that O2 was the dominant and essential fixture of the registered proprietor’s marks and that this was the feature in which the applicant had a significant reputation. The Hearing Officer concluded that the registered proprietor was taking unfair advantage in relation to the applicant’s mark and that the applicant succeeded on this ground. There was also the likelihood of damage and there was no “due cause” defence.

The ground under Section 5(4)(a) was dismissed because while there was evidence of reputation there was no evidence in relation to misrepresentation or damage.

---

BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII
URL: http://www.bailii.org/uk/cases/UKIntelP/2006/o12206.html