Decision Nº O/090/21 from Intellectual Property Office - (Trade market), 5 February 2021
| Court | Intellectual Property Office (United Kingdom) |
| Judge | Mr James Hopkins |
| Administrative Decision Number | O/090/21 |
| Registration Number | UK00003475903 |
| Date | 05 February 2021 |
O/090/21
TRADE MARKS ACT 1994
IN THE MATTER OF
TRADE MARK APPLICATON NO. 3475903
BY SVA GLOBAL VENTURES LTD
TO REGISTER AS A TRADE MARK:
YOGI BY RDX
IN CLASSES 6, 9, 10, 14, 18, 25, 27, 28 & 35
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 600001440
BY FOCUS INTERNATIONAL LIMITED
Page 2 of 35
BACKGROUND AND PLEADINGS
1. On 18 March 2020, SVA Global Ventures Ltd (“the applicant”) applied to register
the trade mark YOGI BY RDX, under number 3475903 (“the application”). It was
accepted and published in the Trade Marks Journal on 5 June 2020 in respect of a
range of goods and services in classes 6, 9, 10, 14, 18, 25, 27, 28 and 35.
2. On 4 August 2020, the application was partially opposed by Focus International
Limited (“the opponent”) by way of the fast track opposition procedure. The opposition
is brought under section 5(2)(b) of the Trade Marks Act 1994 (“the Act”) and is directed
against the following goods and services of the application:
Class 18: All purpose sports bags; All-purpose athletic bags; Bags; Bags for
clothes; Bags for sports; Bags made of leather; Bags made of imitation leather;
Belt bags; Belts (Leather shoulder -); Cloth bags; Game bags; Garment bags;
Imitation leather bags; Kit bags; Yoga Bags; Leather bags; Leather shoulder
belts; Shoe bags; Shoulder belts; Sport bags; Sports bags; Sports [Bags for -];
Sports packs; Waist bags; Waist packs.
Class 25: Athletic clothing; Athletic footwear; Athletic shoes; Athletic tights;
Athletics footwear; Athletics shoes; Athletics vests; Boots for sport; Boxing
shoes; Boxing shorts; Clothes for sport; Clothes for sports; Clothing for
gymnastics; Clothing for sports; Clothing for wear in judo practices; Clothing for
wear in wrestling games; Footwear for sport; Footwear for sports; Footwear for
track and field athletics; Footwear for use in sport; Gloves; Gloves [clothing];
Gloves for apparel; Gym boots; Gym shorts; Gym suits; Gymnastic shoes; Yoga
Apparel; Gymshoes; Gymwear; Head bands; Head sweatbands; Head wear;
Headgear; Headgear for wear; Jogging bottoms [clothing]; Jogging outfits;
Jogging pants; Jogging sets [clothing]; Jogging shoes; Jogging suits; Jogging
tops; Judo suits; Judo uniforms; Jumpsuits; Karate suits; Karate uniforms;
Martial arts uniforms; Sport shirts; Sport shoes; Sports bras; Sports clothing;
Sports clothing [other than golf gloves]; Sports footwear; Sports garments;
Sports headgear [other than helmets]; Sports jerseys; Sports over uniforms;
Sports overuniforms; Sports pants; Sports shirts; Sports shirts with short
Page 3 of 35
sleeves; Sports shoes; Sports wear; Sportswear; Sweat bands; Sweat bands
for the head; Sweat bands for the wrist; Taekwondo suits; Taekwondo uniforms;
Track suits; Training shoes; Walking shoes; Walking shorts.
Class 35: Retail services connected with the sale of clothing and clothing
accessories.
3. The opponent relies upon its International Registration Designating the European
Union number 1301634 (“the earlier mark”), which consists of the following trade mark:
4. The earlier mark was registered on 21 March 2016 and protection was granted in
the EU on 9 December 2016 for ‘footwear, clothing, headgear’ in class 25. For the
purposes of the opposition, the opponent relies upon all the foregoing goods.
5. The opponent’s mark is an earlier mark, in accordance with Section 6 of the Act.1
However, as it has not been protected for five years or more at the filing date of the
application, it is not subject to the proof of use requirements specified within Section
6A of the Act. As a consequence, the opponent may rely upon all of the goods for
which the earlier mark has protection.
6. The opponent argues that the contested goods and services of the application are
identical or similar to the goods of the earlier mark. Moreover, the opponent contends
that the distinctive and dominant elements of the competing marks are identical, that
being the word ‘YOGI’. Based upon these factors, the opponent submits that there is
a likelihood of confusion between the competing marks, including a likelihood of
association.
1 Although the UK has left the EU and the transition per iod has now expired, EUTMs, and International
Marks which have designated the EU for protection, are still relevant in these proceedings given the
impact of the transitional provisions of the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019.
Tribunal Practice Notice 2/2020 refers.
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