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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 >> SLM (Trade Mark: Opposition) [1999] UKIntelP o27199 (6 August 1999) URL: http://www.bailii.org/uk/cases/UKIntelP/1999/o27199.html Cite as: [1999] UKIntelP o27199 |
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For the whole decision click here: o27199
Result
Sections 3(6) & 32(3) - Opposition not pursued.
Sections 5(2)(a) & (b) - Opposition failed.
Section 5(3) - Opposition failed.
Section 5(4)(a) - Opposition failed.
Points Of Interest
Summary
Opposition based on opponent’s numerous UK and Community registrations (and pending applications) in Classes 12, 37 and 39 et al in respect of trade marks including the letters SL or SLK solus and in combination with various words and numerals, notably with MERCEDES as a prefix and/or with 3-digit numerals as a suffix. The opponent also claimed that SL was entitled to protection under the Paris Convention as a well known trade mark (per Section 6(1)(c)).
In considering opposition under Section 5(2), the Hearing Officer saw no basis for a case under Section 5(2)(a), and in his view the opponents had failed to provide the evidence needed to support the claim that SL was well known to a substantial proportion of the UK public at large. Thus he refused to treat it as a well known mark under the Convention. Moreover, having compared the respective marks in the light of the usual case law, he saw no likelihood of confusion, given the care taken in purchasing goods within Class 12 (notably automobiles) and his conclusion that the public is used to differentiating between letter marks when purchasing services within Classes 37 and 39. Opposition under Section 5(2)(b) therefore failed.
Under Section 5(3), the Hearing Officer found that, in the light of the applicant’s use of the mark in suit over a lengthy period (and its derivation from the applicant’s name), the opponent had failed to prove that use of the mark in suit would be without due cause. He then proceeded to find that the opponent also failed to clear the other Section 5(3) hurdles, and opposition on that ground also failed.
Under Section 5(4)(a), the Hearing Officer concluded that the opponent had both a goodwill and reputation in SL in relation to cars, but not in 3-letter marks including SL. He was accordingly not persuaded that any misrepresentation would arise in respect of goods under Class 12, and he saw far less likelihood of confusion in relation to services under Classes 37 and 39.
