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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> 3 D MARK - FOOTBALL BOOT (Trade Mark: Opposition) [1999] UKIntelP o18899 (7 July 1999) URL: http://www.bailii.org/uk/cases/UKIntelP/1999/o18899.html Cite as: [1999] UKIntelP o18899 |
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For the whole decision click here: o18899
Result
Section 5(3) - Opposition succeeded
Section 5(3) - Opposition succeeded
Section 5(4)(a) - Opposition partially successful
Section 5(4)(a) - Opposition partially successful
Points Of Interest
Summary
The opponents are the owners of a three stripes device mark which consists of three equally spaced stripes, each of the same colour and width, which appear on the outside of the uppers of footwear. They also had extensive use of this mark in relation to footwear and clothing generally and it has been widely promoted within the UK and elsewhere. The applicants claimed that the markings on their boot device, which they referred to as embellishments, were not similar to the opponents mark.
Under Section 5(3) it was accepted that the goods of the applicant were some distance from the goods of the opponent but the method of packaging in bottles the shape of football boots meant that the link between alcoholic drinks, soft drinks etc and footwear, was established. In view of the opponents reputation in their mark the Hearing Officer concluded that use by the applicants of their mark would amount to parasitic use; would take unfair advantage of the reputation of the opponents mark and use by the applicants of their mark on alcoholic drinks would be detrimental to the reputation of the opponents mark. Opposition on this ground succeeded.
With regard to the ground under Section 5(4)(a) - Passing Off - the Hearing Officer noted the opponents reputation in their mark but decided that their evidence really only established a link with the applicants goods where they were connected "with the sporting section of the leisure industry" eg isotonic drinks for use by sports persons. He, therefore, concluded that the opposition on this ground only succeeded to this limited extent and the application could proceed in respect of the remaining goods.
