Decision Nº O/0168/24 from Intellectual Property Office - (Trade market), 29 February 2024
| Court | Intellectual Property Office (United Kingdom) |
| Judge | Ms J Ralph |
| Date | 29 February 2024 |
| Administrative Decision Number | O/0168/24 |
| Registration Number | UK00003728673 |
O-0168-24
TRADE MARKS ACT 1994
IN THE MATTER OF
TRADE MARK APPLICATION NO 3728673
BY ASSURE TECH.(HANGZHOU)CO.,LTD
TO REGISTER
AS A TRADE MARK
IN CLASSES 5 & 10
AND OPPOSITION THERETO (UNDER NO. 434129)
BY
ROCHE DIABETES CARE GMBH
2 | P a g e
Background & Pleadings
1. Assure Tech. (Hangzhou) Co.,Ltd (“the applicant”) applied to register the trade
mark set out on the title page of this decision on 3 December 2021. It was published
in the Trade Marks Journal on 11 March 2022 in classes 5 and 10. The goods will
be set out later in this decision.
2. Roche Diabetes Care GmbH (“the opponent”) opposed the application in full on 13
June 2022 under sections 5(2)(b) and 5(3) of the Trade Marks Act 1994 (“the Act”).
The opponent relies on the following earlier marks under section 5(2)(b):
UK TM No. 901279546
UK TM No. 904054235
Accu-Chek
Classes 5, 9, 10, 41 & 42
Filing date: 9 August 1999
Registration date: 18 January 2001
ACCU-CHEK
Classes 5, 10 & 44
Filing date: 30 September 2004
Registration date: 12 June 2006
UK TM No.801449793
International Registration (IR) No. 1579260
ACCU-CHEK GUIDE ME
Class 10
Filing date: 26 October 2018
Registration date: 16 July 2019
Priority date: 25 June 2018 (Germany)
ACCU-CHEK SMARTGUIDE
Classes 9, 10 & 42
Date of protection for the IR in UK: 8 July 2021
Designation date: 16 December 2020
Priority date: 13 October 2020 (EUIPO)
3. Under section 5(2)(b) the opponent claims that the application is identical or highly
similar to its earlier marks, goods and services, with the result that there is a likelihood
of confusion. It relies on all its goods and services which are set out in Annex 1 of this
decision.
3 | P a g e
4. Under section 5(3) the opponent relies on registration nos. 901279546 and
904054235 only. The opponent states in its Notice of Opposition that,
“the opponent has established an extensive reputation in its earlier mark in the
United Kingdom through substantial use and promotion of the mark. […] Use
by the applicant of the mark applied for in relation to the goods covered by the
application would unfairly trade off or ride on the coattails of this significant
reputation. Additionally the applicant, through use of the mark applied for, will
benefit from the power of attraction, reputation and prestige of the opponent’s
earlier mark and exploit the marketing effort expended by the opponent over
many years of use and promotion. The opponent has established a good
reputation and is known for providing extremely high standards of products
under its earlier mark. Use and registration of the mark applied for could tarnish
or otherwise cause detriment to this reputation, particularly if a customer
purchases the applicant’s products believing them to be related to the opponent
and is then dissatisfied.”
5. The opponent’s registrations have filing dates that are earlier than the filing date of
the application and are therefore earlier marks, in accordance with section 6 of the
Act. As the registration procedures for nos. 901279546 and 904054235 were
completed more than 5 years prior to the filing date of the contested application, they
are subject to the use conditions, as per section 6A of the Act. The opponent made a
statement of use in respect of all the goods and services it relies on. Earlier registration
nos. 801449793 and 1579260 have not been registered for five years or more before
the filing date of the application so are not subject to the proof of use requirements, as
per section 6A of the Act.
6. The applicant filed a counterstatement in which it denied the grounds of opposition
and put the opponent to proof of use.
7. Both sides have been represented in these proceedings. The applicant has been
represented by Handsome I.P. Ltd and the opponent by Forresters IP LLP. The
opponent filed evidence in these proceedings and the applicant filed written
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