Trade mark decision

BL Number

O/150/08

Decision date

28 May 2008

Hearing officer

Mr D Landau

Mark

ACTIVINTEL & device

Classes

09, 42

Applicant

Gary Milton Munroe

Opponent

Intel Corporation

Opposition

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

Result

Section 5(2)(b): Opposition successful. Section 5(3): Not considered. Section 5(4)(a): Not considered.

Points Of Interest

• 1. The applicant wrote to the opponent about possible objection to his marks, which he said were based on the words ACTIVE INTELLIGENCE, but by the time the opponent responded the applications had already been filed. The Hearing Officer ignored this correspondence in reaching his decision.
• 2. The applicant made an application to the Appointed Person to be allowed to adduce fresh evidence into the proceedings. In his decision dated 24 November 2008 (BL O/331/08) the Appointed Person refused the request.
• 3. The applicant requested permission to amend grounds of appeal. Request refused by Appointed Person dated 24 November 2008 (BL O/330/08)

Summary

The opponent owns a number of registrations for the mark INTEL in word and logo form in respect of a range of goods in class 9 and services in class 42. The Hearing Officer found that identical and similar goods and services were at issue in these proceedings.

The opponent also filed evidence of use of its mark. Additionally the applicant accepted the reputation of the opponent’s mark and the Hearing Officer noted as a finding of fact that the opponent has an enormous reputation in its mark. The opponent also filed survey evidence but the Hearing Officer found it to be of little assistance in reaching his decision.

Under Section 5(2)(b) the Hearing Officer compared the respective marks on the basis that identical and similar goods and services were at issue. As regards the word element in the applicant’s mark the Hearing Officer thought it likely that visually and orally there would be a split between the ACTIV and INTEL elements. The recognition of the INTEL element in the marks would clearly indicate a connection with the opponent, because of the reputation the opponent has in its mark. As there is no connection or association deception would occur. The Hearing Officer went on to find the opponent successful in its opposition under Section 5(2)(b).

In view of his decision in respect of the ground under Section 5(2)(b) the Hearing Officer saw no need to consider the grounds under Section 5(3) and 5(4)(a).

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URL: http://www.bailii.org/uk/cases/UKIntelP/2008/o15008.html