Trade mark decision

BL Number

O/048/07

Decision date

14 February 2007

Hearing officer

Mr M Reynolds

Mark

PAINTMASTER & device

Classes

02

Applicant

Paintmaster (2000) Ltd

Opponent

Wickes Limited

Opposition

Section 5(2)(b)

Result

Section 5(2)(b): Opposition successful. Specification restricted.

Points Of Interest

• The applicant appealed to the Appointed Person. Subsequently the parties reached a settlement agreement which included withdrawal of the appeal and a reduction in costs payable by the applicant from £1,000 to £500 (see decision dated 24 October 2007 (Bl O/318/07).

Summary

The applied for mark covered a range of goods in Class 2 and the opponent only objected to paints and closely associated goods on the grounds that it owns the MASTER mark registered in respect of paints in Class 2. The opponent also filed details of extensive use and promotion of its mark and the Hearing Officer accepted that it had an enhanced level of distinctiveness through the use made of it.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and that some other goods had different levels of similarity. In comparing the respective marks PAINTMASTER and device and MASTER the Hearing Officer decided that PAINTMASTER was the distinctive and prominent element in the applicant’s mark and this element was compared with the opponent’s MASTER mark. Overall and taking account of the opponent’s user, the Hearing Officer concluded that the marks, as totalities, were sufficiently close for consumers to associate them or assume that the respective goods came from linked undertakings, when this was not the case. The Hearing Officer decided that the opposition was successful in respect of paints and closely similar goods. Application allowed to proceed for other goods in specification.

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URL: http://www.bailii.org/uk/cases/UKIntelP/2007/o04807.html