Decision Nº O/0158/24 from Intellectual Property Office - (Trade market), 27 February 2024
| Court | Intellectual Property Office (United Kingdom) |
| Judge | Mrs D Ferrari |
| Date | 27 February 2024 |
| Administrative Decision Number | O/0158/24 |
| Registration Number | UK00003795316 |
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BL O/0158/24
TRADE MARKS ACT 1994
IN THE MATTER OF
TRADE MARK APPLICATION No. 3795316
BY KATIE BECKETT
TO REGISTER THE TRADE MARK:
IN CLASSES 16 AND 44
-AND-
THE OPPOSITION THERETO UNDER No. 437701
BY DR. JONATHAN SOLITY
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Background and pleadings
1. On 3 June 2022, Katie Beckett (“the Applicant”), applied to register the trade mark
shown on the cover page of this decision. The application was accepted and published
for opposition purposes in the Trade Marks Journal on 26 August 2022. Registration
is sought for goods and services in Classes 16 and 44. The goods and services are
laid out in their entirety at paragraph 65 of this decision.
2. On 25 November 2022, Dr Jonathan Solity (“the Opponent”) opposed the
application under section 5(2)(b) of the Trade Marks Act 1994 (“the Act”). The
opposition is directed at all the applied-for goods and services.
3. The Opponent relies on its UK trade mark registration for the word ‘OPTIMA’, trade
mark number 3092314, which was filed on 2 February 2015 and has a registration
date of 1 May 2015. The Opponent relies on all the services for which his mark is
registered, namely:
Class 41
Educational services; teaching services; providing of training; planning, arranging
and conducting courses, classes, tutorials, conferences, lectures, seminars,
presentations, events, workshops and symposiums for educational, instructional
and training purposes; training in teaching effectiveness; education and training in
the administration, interpretation, evaluation and reporting of aptitude, ability and
psychological tests; psychological training and coaching services in the field of
education; provision of education and training services in psychological wellbeing
and performance development; design of educational programmes, materials and
resources; instruction and training provided on-line from a computer database or
from facilities provided on the Internet and other similar information networks;
providing electronic tutorials; publishing services; publication of multi-media
publications; providing electronic publications and reference material (non-
downloadable) in the fields of education and training; information, advisory and
consultancy services in connection with any of the aforementioned services.
Class 44
Psychological assessment, consultation and counselling services; instructional
psychology services; psychological research; psychological testing; provision of
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information relating to psychology; information, advisory and consultancy services
in connection with any of the aforementioned services.
4. By virtue of its earlier filing date, the trade mark upon which the Opponent relies
qualifies as an earlier trade mark pursuant to section 6 of the Act.
5. The Opponent argues that the marks are similar and that the goods and services
are identical or similar, giving rise to a likelihood of confusion. As the earlier mark had
been registered for more than five years at the filing date of the contested mark, it is
subject to the use conditions pursuant to section 6A of the Act. Accordingly, the
Opponent made a statement that he has used his mark in relation to all of the services
relied on.
6. The Applicant filed a defence and counterstatement denying the claims made and
requested the Opponent prove use of the earlier mark in relation to all the services for
which it is registered.
7. Both parties filed submissions during the evidence rounds and only the Opponent
filed evidence. No hearing was requested, rather both parties elected to file written
submissions in lieu of a hearing. I therefore make this decision following a careful
consideration of the papers before me.
8. The Opponent is represented by Inbrandgible Limited and the Applicant is
represented by Bayview IP.
Assimilated law
9. The provisions of the Act relied upon in these proceedings are assimilated law, as
they are derived from EU law. Although the UK has left the EU, section 6(3)(a) of the
European Union (Withdrawal) Act 2018 (as amended by Schedule 2 of the Retained
EU Law (Revocation and Reform) Act 2023) requires tribunals applying assimilated
law to follow assimilated EU case law. That is why this decision refers to decisions of
the EU courts which predate the UK’s withdrawal from the EU.
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