Decision Nº O/057/14 from Intellectual Property Office - (Trade market), 3 February 2014
| Judge | Mr O Morris |
| Date | 03 February 2014 |
| Administrative Decision Number | O/057/14 |
| Registration Number | UK00002562869 |
| Court | Intellectual Property Office (United Kingdom) |
O-057-14
IN THE MATTER OF TRADE MARK APPLICATION 2562869
BY PZ CUSSONS (INTERNATIONAL) LIMITED
TO REGISTER THE FOLLOWING TRADE MARK IN CLASS 3:
AND
OPPOSITION THERETO (NO. 102533) BY HANDBAG.COM LIMITED
Page 2 of 21
The background and the pleadings
1) The trade mark the subject of this dispute was filed by PZ Cussons
(International) Limited (the “applicant”) on 1 November 2010 and published in the
Trade Marks Journal on 15 July 2011. The trade mark, together with the goods
for which registration is sought, is:
Class 3: Non-medicated toilet preparations for personal use; preparations
for cleansing the skin; preparations for cleansing the skin and having anti-
bacterial properties; facial and body moisturising preparations; body
creams, milks, lotions; massage oils; aromatic and fragrance preparations;
hand creams; soap; liquid soap; bath creams; bath foams; bath salts; bath
oils; bath herbs; shower gels; shower creams; shaving preparations;
shave gels; shaving creams; shaving foams; after-shave preparations;
talc; hair preparations; hair care preparations; shampoos; conditioners;
combined shampoo and conditioners; hair lotions; hair colouring
preparations; hair straightening preparations; hair sprays; hair mousses;
hair lacquers; perfumes, eau de toilettes; essential oils.
2) Registration of the mark is opposed by Handbag.com Limited (the “opponent”)
on grounds under sections 5(2)(b) and 5(4)(a) of the Trade Marks Act 1994 (“the
Act”). Under section 5(2)(b), the opponent relies on UK trade mark registration
2208391 for the mark: HANDBAG.COM. The mark is registered for a wide range
of goods and services, but the opponent relies only upon the following:
Class 3: Cosmetics, toilet preparations, soap, perfume, preparations for
the hair, personal deodorants.
Class 44: Advisory services relating to beauty and healthcare.
3) The opponent’s mark was filed on 13 September 1999 and completed its
registration process on 19 May 2000. Given the filing date, the mark constitutes
an earlier mark as defined by section 6 of the Act. Given the date the registration
process was completed, the proof of use provisions set out in section 6A of the
Act are applicable because the earlier mark had been registered for five years or
more as of the date of publication of the applied for mark. The opponent made a
statement of use that its mark has been used in respect of all of the goods and
services relied upon.
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