Trade mark decision

BL Number

O/108/01

Decision date

7 March 2001

Hearing officer

Mr S P Rowan

Mark

DEVICE ONLY MARK

Classes

35

Applicant

Tazaki Consultants Ltd

Opponent

Thomas International Ltd

Opposition

Sections 3(3)(b) & 3(6), & Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Sections 3(3)(b) & 3(6) - Opposition not pursued

Section 5(2)(b) - Opposition succeeded

Section 5(3) - Opposition not pursued

Section 5(4)(a) - Opposition not decided

Points Of Interest

• 1. Restricting specification of mark in suit - The Hearing Officer was not persuaded that the applicant could proceed to registration by restricting its specification (to recruiting bi-lingual staff for Japanese companies) since the opponent’s specification was not limited.

Summary

Opposition based on opponent’s various UK and Community registrations of jigsaw devices covering goods and services in Classes 9, 16, 35, 41 and 42. In considering what he regarded as the opponent's best case under Section 5(2)(b), the Hearing Officer concluded that identical or very similar services (recruitment and employment agencies) were involved.

Applying the usual tests, he further concluded that the public would not recall the juxtaposition of the various elements of the respective marks, rather they would be recalled simply as jigsaw devices, and given the inherent distinctiveness of the opponent's mark, and the closeness of the services, he found real likelihood of confusion, including association between the marks. Opposition on that ground therefore succeeded.

In respect of opposition under Section 5(4)(a), the Hearing Officer found no need to consider this ground, observing that if the opponent had failed under Section 5(2)(b) they would have fared no better under Section 5(4)(a).

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