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 >> DIGITAL INSIDE (Trade Mark: Opposition) [2003] UKIntelP o05203 (20 February 2003) URL: http://www.bailii.org/uk/cases/UKIntelP/2003/o05203.html Cite as: [2003] UKIntelP o5203, [2003] UKIntelP o05203 |
||
[New search] [Printable PDF version] [Help]
For the whole decision click here: o05203
Result
Section 5(2)(b): - Opposition failed.
Section 5(3): - Opposition succeeded.
Section 5(4)(a): - Not decided.
Points Of Interest
Summary
The opponents opposition was based on their ownership of a number of registrations for the mark INTEL INSIDE and extensive use of that mark over a number of years. From the evidence filed the Hearing Officer accepted that the opponents mark was a famous trade mark in relation to microprocessors in computers and other associated apparatus for use with microprocessors.
The applicants also filed evidence to explain that their mark would be used in relation to a laser device which is installed in coin operated apparatus to detect or recognise coins which are inserted and assess whether they reach the correct totals. The device is “retro fitted ‘inside’ existing and newly made coin operated apparatus”.
Under Section 5(3) the Hearing Officer compared the respective marks INTEL INSIDE and DIGITALL (stylised) INSIDE. The INTEL INSIDE mark had been coined to show that computers incorporated an INTEL microprocessor. The applicants mark consisted of the word DIGITALL (stylised) which was descriptive in relation to their digital goods and the word INSIDE was to refer to the incorporation of the laser device in coin operated equipment. Taking into account the common use of the word INSIDE and weakness (in distinctive terms) of the DIGITALL element the Hearing Officer considered that the respective marks were similar. In relation to the respective goods the Hearing Officer expressed doubt as to whether the goods of interest to the applicants were in fact included within the specification applied for: Coin operated apparatus and systems. However, it was the applied for goods which must be compared with the goods in which the opponents had a reputation, microprocessors, integrated circuits, computer memory devices etc. After applying the usual tests the Hearing Officer decided that the respective goods were not similar.
Having concluded that the respective marks were similar and that dissimilar goods were at issue the Hearing Officer went on to consider whether use of the applicants mark would be without due cause. Bearing in mind the nature of the applicants goods they might have an honest reason for using ‘INSIDE’ in their mark. However, the Hearing Officer believed that they knew of the INTEL INSIDE mark and thought that use in that style would achieve the effect wanted. That was insufficient to justify use with due cause. Bearing in mind the extent of the reputation of the opponents mark the Hearing Officer decided that if the applicants were to use their mark in relation to the goods applied for, the average customer was likely to believe there was a connection between the goods of Intel and those of Digitall. This must lead to a finding of unfair advantage since it would be a boon to sales. Opposition thus succeeded on the Section 5(3) ground.
The grounds under Sections 5(2)(b) and 5(4)(a) were mentioned only briefly. The Hearing Officer merely observed that the opponents were unlikely to have succeeded under Section 5(2)(b) and that the opponents position under Section 5(4)(a) was no better as compared to Section 5(3).
Finally the Hearing Officer noted that the opponents evidence had been high in volume but poorly focussed with what he termed “much chaff”. As a consequence, even though the opponents had been successful he decided to award no costs to either party.
