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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> DESKTALK (Trade Mark: Opposition) [1998] UKIntelP o09698 (29 April 1998) URL: http://www.bailii.org/uk/cases/UKIntelP/1998/o09698.html Cite as: [1998] UKIntelP o9698, [1998] UKIntelP o09698 |
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For the whole decision click here: o09698
Result
Section 3(6) - Opposition failed.
Section 5(2)(b) - Opposition failed.
Section 5(4)(a) - Opposition successful.
Points Of Interest
Summary
The opponents opposition was based on an earlier application for the mark DECTALK (which was in the process of being assigned to them) and use of the mark DECTALK from 1983 onwards in relation to a range of computer software and hardware.
Under Section 3(6) the opponents claimed that the applicants did not have a bona fide intention to use their mark in relation to the goods claimed. However, they filed no evidence to support this claim and the Hearing Officer decided that there was no onus on the applicants to rebut the claim. There would only be an onus on them if the opponents established a prima facie case. Opposition failed on this ground.
Under Section 5(2)(b), the Hearing Officer accepted that the mark referred to in the opposition papers was an earlier trade mark. However, no evidence had been filed to explain the status of this application nor was the opponents representative at the Hearing able to confirm the status of the mark. In the light of this failure the Hearing Officer determined that he was not satisfied that the application claimed, constituted an earlier right. Consequently, he found that this ground of opposition was not made out.
With regard to the ground under Section 5(4)(a) - Passing Off - the Hearing Officer accepted that the opponents had a reputation in their mark at the relevant date though he observed that the evidence filed was of a very general nature and in some respects lacked credibility. The Hearing Officer then went on to compare the marks DECtalk (the opponents mark as used) with fair use of the applicants mark DESKTALK. While he accepted there were differences in the two marks he thought that they could be confused because of imperfect recollection, particularly as the opponents goods were adapted for desk top applications. Opposition thus succeeded on this ground.
As the applicants had not attended the hearing or offered to restrict their specifications to avoid the opponents area of interest the Hearing Officer refused the application in its entirety.
