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Quarterly report on trade mark decisions – Q3

Community trade mark opposition: ZIH CORP (applicant) v GSM ASSOCIATION (opponent)

The applicant filed an application for the device mark shown below for near-field communication (NFC) technology enabled devices, namely, printers.

ZIH CORP

The opponent was the proprietor of the device mark shown below which covered, among other things, peripheral equipment for computers.

GSM ASSOCIATION

OHIM found that there was no likelihood of confusion between the two marks as the marks were only visually similar to a limited extent. They found that both marks consisted of a rectangular shape and some concentric semi-circular lines but that the marks differed in several respects. The earlier mark contains a white rectangle bordered in black with curved corners and the rectangle was placed at an angle, whilst the contested mark contained a mainly black rectangle bordered in white with sharper corners in a vertical position.  OHIM held that conceptually, the public would understand the concentric semi circles as an indication of transmission of signals.  Given that both marks covered computer equipment, it was held that this element of both marks was non-distinctive for the goods concerned as the public would understand the meaning and would not pay attention to it.

In view of the visual differences between the marks, the opposition was rejected and the application was allowed to proceed.

UK trade mark opposition: EVERYTHING EVERYWHERE LIMITED (applicant) v SHEBANG TECHNOLOGIES GROUP LIMITED (opponent)

The applicant filed CLONE PHONE FULLY LOADED for computer equipment, data, smart, SIM, integrated circuit, telephone and encoded cards, mobile phones, laptops and tablets, telecommunications apparatus, retail of telecommunications apparatus, repair of telecommunications apparatus, telecommunications services and technical support services.

The opponent was the proprietor of FULLY LOADED for telecommunications services and mobile phone services.

The UKIPO confirmed that there was no likelihood of direct confusion but that there was a likelihood of indirect confusion and refused the mark in relation to the above goods and services, as both marks contained the term “FULLY LOADED” which the UKIPO said was far from negligible and will not be overlooked, notwithstanding the addition of the catchy jingle like term “CLONE PHONE” in the application.  The UKIPO said that the term “FULLY LOADED” in the application stood out as a separate phrase from “CLONE PHONE” as they are unrhymed and bisyllabic words which have a different rhythm.

UK trade mark opposition: NTA FOODS LTD (applicant) v CADBURY ENTERPRISES PTE LTD

The applicant filed a number of LOGO applications for THE NATURAL CHOCOLATE COMPANY, THE NATURAL FOOD COMPANY, THE NATURAL SNACKS COMPANY and THE NATURAL GUM COMPANY, all in the same logo format, an example of which is below, covering various food products, including confectionery, cakes, ice-cream, biscuits, desserts, chocolate, chewing gum, candy and mints:

The Natural Chocolate Company

The opponent was the proprietor of various word marks and logo marks all featuring the prominent wording “THE NATURAL CONFECTIONARY COMPANY” which covered confectionery, ice cream and ices. An example of the logo marks relied upon by Cadbury is below:

The Natural Confectionery Company

The UKIPO found that there was no likelihood of confusion between the marks, even though the goods covered by the respective marks were identical or highly similar and the various applications filed by the applicant were allowed to proceed to registration.  It held that none of the words in the earlier marks were distinctive on their own, but when combined, they created a mark with a degree of distinctive character, but that it was to a low degree.  The UKIPO said that the differences between the marks were too great to go unnoticed and that the average consumer is likely to think that goods bearing the marks originate from two unconnected companies and for that reason, there was no likelihood of confusion.

UK trade mark opposition: COMPANIE DE BMR LIMITED (applicant) v GRAHAM ROBERT HANSON (opponent)

The applicant filed a logo application for SFC Plus (see below) covering restaurant services, services for providing food and drink, temporary accommodation.

SFC Plus

The opponent was the proprietor of a word mark for SFC and a series of logos (shown below) covering chicken and chicken products, prepared meals, retail services in connection with chicken and cooked chicken products and prepared foodstuffs.

SFC

The UKIPO found that there was a likelihood of confusion between SFC PLUS and SFC, as the word “PLUS” was a non-distinctive element as it is a word commonly used to denote that the services offer something extra and it was therefore no more than a laudatory epithet.  The UKIPO also said that this element lacked dominance given its positioning at the end of the mark.  Further, it held that the services covered by the application were highly similar to the goods covered by the opponent’s marks as, it said, they have the same users, intended purpose and are in competition and the opponent’s goods are indispensable for the provision of the applicant’s services (i.e. food is necessary to run a restaurant).  The later mark, SFC PLUS was therefore refused.

UK trade mark opposition: DRD COMMUNICATIONS LIMITED (applicant) v O2 HOLDINGS LIMITED (opponent)

The applicant filed a logo mark including the wording V Simplicity as a Service (see logo below) covering telecommunications apparatus, telecommunications services and provision and management of IT systems.

Simplicity as a Service

The opponent was the proprietor of the mark SIMPLICITY covering mobile telecommunications equipment, mobile telecommunications services, design and development of computer hardware and software and IT services.

The UKIPO found there was a likelihood of confusion between SIMPLICITY and the later mark V SIMPLICITY AS A SERVICE, as both marks contained the word SIMPLICITY.  It held that in the later mark, the SIMPLICITY element was not swamped or lost in the overall impression of the mark.  It said that the concept of both marks resided in the word SIMPLICITY.  Given the clear visual and aural differences in the marks, the UKIPO held that there was no likelihood of direct confusion, however, it held that the average consumer may put the similarities that are present between the marks down to the responsible undertakings being the same or related and that, coupled with the identity between the goods and services covered by the two marks, there was a likelihood of indirect confusion.  The later mark, V SIMPLICITY AS A SERVICE was therefore refused.