Decision Nº O/131/12 from Intellectual Property Office - (Trade market), 23 March 2012
| Judge | Mr O Morris |
| Registration Number | UK00002496940 |
| Administrative Decision Number | O/131/12 |
| Date | 23 March 2012 |
| Court | Intellectual Property Office (United Kingdom) |
O/131/12
IN THE MATTER OF APPLICATION 2496940
BY HUNTON FIBER AS FOR THE TRADE MARK:
SILENCIO
AND
OPPOSITION THERETO (NO 99253) BY EGGER RETAIL PRODUCTS GMBH
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The background and the pleadings
1) Application 2496940 was applied for by Hunton Fiber AS (“Hunton”) on 5
September 2008. The mark consists of the word SILENCIO. The mark was
published in the Trade Marks Journal on 27 March 2009. Various goods in
classes 11, 17 & 19 are sought to be registered, but the opposition is only
against:
Class 17: Packing, stopping and insulating materials; electrical, thermal
and acoustic insulating material.
Class 19: Building materials (non-metallic)
2) Egger Retail Products GmbH (“Egger”) opposes the registration of the above
application in respect of the above goods. Its opposition was filed on 26 June
2009 and is based on grounds under sections 5(2)(b) & 5(3) of the Trade Marks
Act 1994 (“the Act”). A single earlier mark is relied upon, namely: International
Registration (“IR”) 770882 which is in respect of the word SILENZIO. The IR is
protected in the UK in respect of the following goods:
Class 19: Laminated chip board panels.
Class 27: Materials for covering existing floors, walls and ceilings, made
from laminated chip boards.
3) The IR designated the UK for protection on 29 October 2001, protection
subsequently being conferred in June 2002. The consequences of these dates
are that: i) Egger’s mark constitutes an earlier mark in accordance with section 6
of the Act, and ii) the earlier mark is subject to the proof of use conditions
contained in section 6A of the Act, protection being conferred more than five
years before the publication of Hunton’s application.
4) Hunton filed a counterstatement denying the grounds of opposition. Hunton
asked Egger to provide proof of use in respect of its earlier mark. Hunton accepts
that its goods in class 19 are similar to the goods covered by Egger’s earlier
mark, but it does not accept that the other goods it seeks to register are similar. It
states that when the nature of the products and the marketplace are considered,
consumers are able to distinguish between marks with relatively small changes. It
states that the marks co-exist on the Norwegian register and have co-existed in
the UK marketplace for several years. Hunton denies that Egger’s mark has a
reputation claiming that if any party has a reputation then it is Hunton not Egger.
5) Both sides filed evidence. Both sides attended a hearing before me where
Hunton were represented by Mr Guy Hollingworth, of Counsel, instructed by
Marks & Clerk LLP and where Egger were represented by Ms Gillian Deas of D
Young & Co.
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