Decision Nº O/198/20 from Intellectual Property Office - (Trade market), 31 March 2020
| Judge | Ms H Harrison |
| Registration Number | UK00003246839, UK00003271045, UK00003271401 |
| Administrative Decision Number | O/198/20 |
| Date | 31 March 2020 |
O-198-20
IN THE MATTER OF:
APPLICATION NO. 3246839
BY RICHARD BALDING
AND
OPPOSITION THERETO UNDER NO. 410773
BY HASU NO HANA LIMITED
AND
APPLICATION NOS 3271401 & 3271045
BY HASU NO HANA LIMITED
AND OPPOSITION THERETO UNDER NOS 411868 & 411870
BY RICHARD BALDING
Page 2 of 75
Background and pleadings
Hasu no Hana’s opposition to trade mark application number 3246839
1. The first case in these proceedings concerns application number 3246839, filed on
28 July 2017 by Richard Balding (“RB”) for the trade mark shown below:
The application was published on 11 August 2017 for a range of goods in classes 25
and 28, shown in full in the annexe to this decision.
2. This application is opposed by Hasu no Hana Limited (“Hasu”). The notice of
opposition was filed on 9 November 2017 and the grounds are based upon ss. 5(1),
5(2)(b) and 3(6) of the Trade Marks Act 1994 (“the Act”). The oppositions are under
each of these grounds directed against all of the goods in the application.
3. Hasu relies upon three earlier trade marks, show below. Only the first is relied upon
under s. 5(1); all three are relied upon under s. 5(2)(b):
(i) European Union Trade Mark (“EUTM”) number 6676308:
Filing date: 24 March 2008; date of entry in register: 3 April 2009;
Page 3 of 75
(ii) EUTM 6555742 nineplus
Filing date: 9 February 2008; date of entry in register: 6 April 2009;
(iii) EUTM 6555775
Filing date 9 February 2008; date of entry in register: 6 April 2009.
4. The specifications for Hasu’s earlier marks are identical and Hasu relies upon all of
the goods for which the earlier marks are registered, namely:
Class 25: Clothing, footwear, headgear.
Class 28: Games and playthings; gymnastic and sporting articles not included in
other classes; including surfboards and skateboards.
5. Hasu claims under ss. 5(1) and 5(2)(b) that the marks are identical or similar, that the
earlier marks are incorporated in the application and that the goods are identical or
similar. It claims that the application therefore offends under s. 5(1) or that there will be
a likelihood of confusion under s. 5(2)(b).
6. Under s. 3(6), Hasu claims that the application was made in the full knowledge of a
prior agreement, whereby Hasu would own any trade marks and would license them to
RB. The application is said to be in breach of that agreement.
7. RB filed a counterstatement denying the grounds of opposition and putting Hasu to
proof.
To continue reading
Request your trial