Decision Nº O/090/22 from Intellectual Property Office - (Trade market), 3 February 2022
| Judge | Ms S Wilson |
| Date | 03 February 2022 |
| Administrative Decision Number | O/090/22 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003509211 |
O/090/22
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. UK00003509211
BY SEKURA GLOBAL IP LLP
FOR THE FOLLOWING TRADE MARK:
PINPOINT
IN CLASSES 9 AND 42
AND IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 423054
BY PINPOINT LIMITED
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BACKGROUND AND PLEADINGS
1. On 7 July 2020, Sekura Global IP LLP (“the applicant”) applied to register the trade
mark shown on the cover page of this decision in the UK. The application was
published for opposition purposes on 30 October 2020 and registration is sought for
the following goods and services:
Class 9 Downloadable software relating to security in retail stores;
Downloadable software for tracking of electronic locking and security
apparatus; downloadable software for tracking of electronic locking and
security apparatus for retail store; Electronic locking apparatus;
releasable locking devices [electric]; Electronic locking systems;
Security surveillance apparatus; security warning apparatus; security
control apparatus; security alarm systems [other than for vehicles];
security systems for use in a retail environment; security systems
comprising electronic article surveillance tags and readers, cameras,
computer software and wireless communication devices; electronic
article surveillance tags and readers; RFID (Radio-frequency
identification) tags and readers; labels with integrated RFID chips;
security systems comprising RFID (Radio-frequency identification) tags
and readers; security systems comprising cameras, video cameras or
CCTV cameras; electronic security tags; electronic tags for goods;
electronic security hard tags to be attached to products and detached or
deactivated at the point of sale; all of the aforesaid relating to loss
prevention in retail.
Class 42 Online portals and software as a service relating to security in retail
stores; Online portals and software as a service for tracking and
managing electronic locking and security devices; Online portals and
software as a service relating to security in retail stores; all of the
aforesaid relating to loss prevention in retail.
2. On 1 February 2021, the application was opposed by Pinpoint Limited (“the
opponent”) based upon sections 5(1), 5(2)(a), 5(2)(b), 5(3) and 5(4)(a) of the Trade
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Marks Act 1994 (“the Act”). Under sections 5(1) and 5(2)(a), the opponent relies upon
EUTM no. 2486660 for the mark PINPOINT (“the First Earlier Mark”), which was filed
on 3 December 2001 and registered on 17 June 2003.1 The opponent relies upon all
of the goods and services for which the mark is registered, namely:
Class 9 Attack alarm systems.
Class 42 Consultancy, advisory and technical support services in relation to attack
alarm systems.
3. Under section 5(2)(b), the opponent relies upon the following trade mark:
UKTM no. 1584570
Filing date 9 September 1994; registration date 16 January 1998
Relying upon all goods for which the mark is registered, namely:
Class 9 Attack alarm systems; all included in Class 9; but not including
those for vehicle or vehicle systems.
(“the Second Earlier Mark”)
4. The opponent claims that the marks are identical or similar and that they cover
identical or similar services. Consequently, the opponent claims that the application
should be refused pursuant to sections 5(1) and 5(2) of the Act.
5. Under section 5(3), the opponent relies upon the First and Second Earlier Marks
and claims to have a reputation for all of the goods and services identified. The
opponent claims that use of the applicant’s mark would, without due cause, take unfair
1 Although the UK has left the EU and the transition period 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 – please see Tribunal
Practice Notice 2/2020 for further information.
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