Trade mark decision

BL Number

O/070/98

Decision date

26 March 1998

Hearing officer

Mr M Tuck

Mark

MAXAM

Classes

06, 19, 37

Applicant

Maxam Security Services Limited

Opponent

Regional Building Maintenance Ltd

Opposition

Sections 5(2) & 5(3)

Result

Section 5(2) - Opposition partially successful.

Section 5(3) - Opposition successful.

Points Of Interest

• Closely similar proceedings had been decided in the decision of Mr D C Morgan dated 13 November 1997.

Summary

The opponents opposition was based on their ownership of a registration for the mark MAXAM in relation to “adhesive-backed films of plastic material for window repairs and the like purposes” and extensive use of their mark in relation to the goods covered by their registration and also associated goods, particularly in the public sector.

Under Section 5(2)(b) the Hearing Officer noted that the respective marks were very similar and went on to compare the goods of the opponents with the goods and services of the applicants. Having applied the usual tests he concluded that the applicants’ specifications in Classes 6 and 19 should be restricted and that Class 37 should be refused in its entirety.

Under Section 5(3) the Hearing Officer drew attention to the opponents reputation of their mark in relation to goods sold in the public sector. As the respective fields of activity would be closely related the Hearing Officer believed that use of the applicant’s mark could be detrimental to the opponents mark and take unfair advantage of the reputation of the opponents mark. Opposition successful on this ground.

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