Trade mark decision

BL Number

O/367/04

Decision date

14 December 2004

Hearing officer

Mr D Landau

Mark

MOBILICITY

Classes

12, 39

Applicant

Capoco Design Limited

Opponent

Exxonmobil Oil Corporation

Opposition

Sections 3(6); 5(2)(b); 5(3) & 5(4)(a)

Result

Section 3(6): - Opposition failed.

Section 5(2)(b): - Opposition failed.

Section 5(3): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest

• 1. Admission of additional evidence.
• 2. Admission of "without prejudice" evidence.
• 3. Bad faith; Section 32(3) not to be used as "a form of revocation prior to registration".
• 4. Comparison of the marks MOBIL v mobilicity

Summary

Preliminary issue : At a late stage in the proceedings each side sought to put in additional evidence. The Hearing Officer considered first the applicant’s request.

Having reviewed the principles and practice on the filing of additional evidence, however, he refused to admit it to the proceedings, principally because it related to events long after the material date and was unlikely to have an important influence on the outcome of the case.

The additional evidence sought to be introduced by the opponent was also refused. It consisted of a 'without prejudice' letter sent by the applicant to the opponent.

After a detailed examination of the case in the light of the relevant jurisprudence, the Hearing Officer saw no reason to depart from the general rule that 'without prejudice' material should not be exhibited in evidence. The opponent's evidence was also open to additional objections in that it could have been filed much earlier in the proceedings and was in any case unlikely to have a decisive bearing on the outcome. The Hearing Officer indicated that he would refuse the evidence on these grounds also.

These matters disposed of, the Hearing Officer turned to a consideration of the matter under Section 3(6) which, in this case, related to an allegation that the applicant had no intention of using the mark in relation to the whole of the specification of goods and services. The Hearing Officer however, found no reason to doubt the good faith of the applicant and he dismissed the Section 3(6) objection, remarking that a good deal of caution had to be exercised in the application of Section 32(3); "it cannot become a backdoor way of demanding evidence of concrete plans in relation to all and every part of a specification; a form of revocation prior to registration."

Taking next the objection under Section 5(2)(b), the Hearing Officer stated his view that the pleadings did not include an attack on the Class 12 goods. A TM5 having been filed requesting a statement of the Hearing Officer’s grounds in respect of that issue, a separate decision covering it was issued (see BL O/368/04). In case he should be wrong, however, the Hearing Officer treated the attack as though it included the Class 12 goods.

The services in Class 39 were identical, in Class 12 there was a high degree of similarity except in the case of lubricants and fuels, which were not similar to the applicant’s goods. Comparing the marks the Hearing Officer found they were not similar; overall, there was no likelihood of confusion. The Section 5(2)(b) objection failed as did the Section 5(3) objection, the marks not being similar. This same absence of similarity in the marks effectively decided the matter under Section 5(4)(a) also, as without it there would be no misrepresentation.

The Hearing Officer made an award of costs to the applicant, adjusted to reflect the fact that it was a litigant in person.

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