BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
United Kingdom Intellectual Property Office Decisions |
||
|
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> IMS (Trade Mark: Opposition) [1999] UKIntelP o25399 (26 July 1999) URL: http://www.bailii.org/uk/cases/UKIntelP/1999/o25399.html Cite as: [1999] UKIntelP o25399 |
||
[New search] [Printable PDF version] [Help]
For the whole decision click here: o25399
Result
Section 3(3)(b) - Opposition not pursued.
Section 3(4) - Opposition not pursued.
Section 3(4) - Opposition not pursued.
Section 3(4) - Opposition succeeded in respect of part of the Section 41 specification. Application to proceed to registration with exclusion clause.
Points Of Interest
Summary
Opposition based on opponent’s claim to prior trading under the name IMS. In relation to opposition under Section 5(4)(a), the Hearing Officer took it as undisputed that there was close similarity between the respective marks, and he was persuaded on the evidence that the opponent had accrued goodwill under its mark, though only in relation to sub-titling services, and albeit as a result of limited usage in what he took to be a specialist service with not many competing concerns.
Applying the usual case law, he then proceeded to find a likelihood of deception in relation to subtitling services within the Class 41 specification, and he took the view that this would be most effectively countered by ordering an exclusion clause to be added to the end of the Class 41 specification (namely: “; but not including subtitling services”). The opposition was dismissed in respect of the other classes, but there was no award of costs since he deemed the opponent to have succeeded in what he inferred was their key area of concern.
