Decision Nº O/102/22 from Intellectual Property Office - (Trade market), 7 February 2022
| Judge | Mrs Suzanne Hitchings |
| Date | 07 February 2022 |
| Registration Number | UK00003510791 |
| Administrative Decision Number | O/102/22 |
O/102/22
TRADE MARKS ACT 1994
IN THE MATTER OF
TRADE MARK APPLICATION NO. 3510791
IN THE NAME OF SHAHJAHAN MIAH
TO REGISTER AS A TRADE MARK
Voom Aid
IN CLASSES 5, 9 & 10
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. OP000422521
BY OMEGA EFA LTD
Page 2 of 270
BACKGROUND AND PLEADINGS
1. On 10 July 2020, Shahjahan Miah (“the applicant”) applied to register Voom Aid
as a trade mark in the United Kingdom. The application was accepted and published
for opposition purposes on 09 October 2020 in respect of goods in classes 5, 9 and
10, as listed in Annex A at the end of this decision.
2. The application is opposed by Omega EFA Ltd (“the opponent”). The opposition
was filed on 22 December 2020 and is based upon Section 5(2)(b) and Section 5(4)(a)
of the Trade Marks Act 1994 (“the Act”). The opposition is directed against all of the
goods in Classes 5 and 10 only of the application.
3. For the purpose of its claim under Section 5(2)(b), the opponent relies upon its UK
trade mark registration number 3337601, for the word mark Voom, which has a filing
date of 11 September 2018 and for which the registration procedure was completed
on 07 December 2018.
4. The earlier mark is registered for goods in classes 5, 30 and 32. The opponent
relies upon all of the goods in Class 5 only, as listed in Annex B.
Page 3 of 270
6. In relation to the 5(2)(b) grounds, the opponent submits that the respective marks
are visually and phonetically similar. Moreover, when considering the dominant
element of the applicant’s mark against the earlier mark, the marks are visually and
phonetically identical as the “aid” element of the contested mark has no distinctive
character, which at most will lead consumers to believe that the contested mark is a
brand extension or sub-brand of the opponent’s business. It further submits that there
is a direct cross over between the competing Class 5 goods, as well as a cross over
between its own class 5 goods and the applicant’s goods in class 10. In relation to
the 5(4)(a) grounds, the opponent submits that it has developed a significant
reputation and goodwill in the healthcare and nutraceuticals industry and that use of
the applicant’s mark will cause damage to that goodwill and reputation. In its written
submissions dated 26 July 2021, the opponent requests the opposition be upheld,
and that an order of costs are made in its favour and that those costs are awarded in
excess of the IPO scales.1
7. The applicant filed a counterstatement denying the claims, stating, in the final
paragraph of Schedule 1 attached to form TM8, that “there is no likeness in services
or goods offered”.
8. Only the opponent filed evidence which I will summarise to the extent that I consider
necessary, and only the opponent filed written submissions, which will not be
summarised, but will be referred to as and where appropriate during this decision.
Neither party requested a hearing, although the opponent also filed written
submissions in lieu of a hearing2. This decision is taken following a careful perusal of
the papers.
9. In these proceedings, the opponent is represented by McDaniels Law and the
applicant is a litigant in person.
Preliminary issues
1 See para 29.
2 See letter dated 16 November 2021.
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