Decision Nº O/002/14 from Intellectual Property Office - (Trade market), 7 January 2014
| Judge | Mr M Bryant |
| Registration Number | UK0002536677A, UK0002536677B |
| Administrative Decision Number | O/002/14 |
| Date | 07 January 2014 |
| Court | Intellectual Property Office (United Kingdom) |
O-002-14
IN THE MATTER OF APPLICATION NOS 2536677A & 2536677B
BY BAUER CONSUMER MEDIA LIMITED TO REGISTER THE TRADE MARK
IN CLASSES 9, 16, 35 & 41 AND 35 & 41 RESPECTIVELY
AND IN THE MATTER OF CONSOLIDATED OPPOSITIONS
THERETO UNDER NOS 100926 & 100932
BY LAND ROVER
BACKGROUND
1) On 19 January 2010, Bauer Consumer Media Limited (“the applicant”) applied
under the Trade Marks Act 1994 (“the Act”) for registration of the following trade
mark:
2) The application was subsequently divided and the two divided applications
proceeded to publication in the Trade Marks Journal on 4 June 2010. The two
applications are in respect of the following goods and services:
Application 2536677A
Class 9
Publications in electronic form supplied on-line from databases or from
facilities provided on the Internet (including web sites); electronic
publications, electronic magazines; multi-media recordings and
publications; computer software, computer programs, data recorded in
electronic, optical or magnetic form; data carriers; audio and visual
recordings; CD-ROMs; CDIs; CD-ROMs discs, cassettes and other data
carriers containing information recorded in magazine form; computer
databases.
Class 16
Printed matter, printed publications, magazines, journals; periodical
publications; newspapers; books; newsletters; guides; printed
programmes; stationery; diaries, calendars, note books, address books,
writing implements; pens, pencils.
Class 35
Advertising, marketing and promotion services; provision of advertising,
marketing and promotional services on-line from computer databases or
the Internet (including web sites).
2
Class 41
Interactive information provided on-line from computer databases or the
Internet, information provided on-line from computer databases or the
Internet, provision of information for accessing via communication and
computer networks, all relating to entertainment, education, sporting and
cultural activities; publication of printed matter.
Application 2536677B
Class 35
Arranging, conducting and production of exhibitions, shows and events.
Class 41
Arranging and conducting courses, conferences, exhibitions, events and
seminars; organising, conducting, production of shows, events, displays
and parties; organisation of events for cultural, entertainment and sporting
purposes; organisation of competitions.
3) On 6 September 2010, Land Rover (“the opponent”) filed notice of oppositions
to both applications. The grounds of opposition in respect of both applications are
in summary:
a) The applications offend under Section 5(2)(b) of the Act because they are
in respect of a mark that is similar to a number of earlier marks in the
name of the opponent and in respect of identical or similar goods and
services;
b) The applications offend under Section 5(3) of the Act because they are in
respect of a mark that is similar to a number of earlier marks that the
opponent claims have a reputation. It claims that use of the mark at issue
will take unfair advantage of the opponent because the applicant will
benefit from the investment the opponent has made in its earlier marks.
Such “free-riding, it is claimed, will result in the applicant obtaining benefit
without cost. It further claims there will be detriment to the reputation of
the earlier marks as the relevant public will believe that the mark applied
for is connected with the opponent, but the opponent will have no control
over the quality of the applicant’s goods and services. Finally, the
opponent claims that the distinctive character of its earlier marks will be
damaged (diluted) by use of the applicant’s mark because it would result
in multiple origins of marks featuring LAND ROVER thereby destroying the
function of its marks as indicators of origin.
3
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