Decision Nº O/238/20 from Intellectual Property Office - (Trade market), 16 April 2020
| Judge | Mr M King |
| Registration Number | UK00003335423 |
| Date | 16 April 2020 |
| Administrative Decision Number | O/238/20 |
| Court | Intellectual Property Office (United Kingdom) |
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O/238/20
IN THE MATTER OF TRADE MARK APPLICATION NO. 3335423 BY
LUKAIROS LTD
TO REGISTER:
AS A TRADE MARK IN CLASS 36
AND
IN THE MATTER OF THE OPPOSITION THERETO
UNDER NO. 414645 BY
KAIROS INVESTMENT MANAGEMENT S.P.A.
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Background and pleadings
1) On 1 September 2018 Lukairos Ltd (“the applicant”) applied to register the
following trade mark in the UK:
2) It was accepted and published in the Trade Marks Journal on 7 September 2018
in respect of the following services:
Class 36: Insurance services related to climate change
3) On 7 December 2018 Kairos Investment Management S.P.A. (“the opponent”)
opposed the trade mark on the basis of ss. 5(2)(b), 5(3) and 5(4)(a) of the Trade
Marks Act 1994 (“the Act”). The s. 5(2)(b) claim is based on the opponent’s earlier
UK trade mark registration, pertinent details of which are detailed below:
Mark: KAIROS
UK Registration Number: 2319448
Filing date: 24 December 2002
Publication date: 21 February 2003
Date of entry in register: 6 June 2003
Class 36 services: Investment and unit trust management services;
merchant banking services; advisory services relating to corporate finance;
corporate and private banking advisory services; trusteeship; real estate
management and advisory services relating thereto; venture capital and
project capital investment services; securities brokerage services; financing
services for the securing of funds for others for the provision of loans or for
the purchase of equities; insurance and mortgage advisory services; financial
management; fund investment services; unit trust services; financial,
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investment and valuation services; credit card and debit card services;
insurance underwriting.
4) The opponent argues that the respective services are identical or similar and that
the marks are similar and so there is a likelihood of confusion.
5) In relation to the s. 5(3) claim the opponent relies on the same earlier UK trade
mark registration detailed above, which it claims to have a reputation for the
following services:
Investment and unit trust management services; fund investment services;
financial and investment services.
6) The opponent argues that the applicant will benefit from the power of attraction,
reputation and prestige of the earlier mark. The opponent also claims that the later
use will be out of its control and that poor quality or offensive goods will cause
detriment to its valuable reputation and business. It claims that use of the later mark
will dilute the distinctive character and reputation of its marks. Finally, the opponent
claims that there is no due cause for adoption of the opposed mark.
7) The s. 5(4)(a) claim is on the basis of the opponent’s alleged earlier rights in the
sign KAIROS. It claims to have been providing the services listed below under this
sign since 1999 and has acquired goodwill. The opponent claims that use of the
trade mark applied for would therefore be a misrepresentation to the public and
result in damage to the aforementioned goodwill.
Investment and unit trust management services; merchant banking services;
advisory services relating to corporate finance; corporate and private banking
advisory services; trusteeship; real estate management and advisory services
relating thereto; venture capital and project capital investment services;
securities brokerage services; financing services for the securing of funds for
others for the provision of loans or for the purchase of equities; insurance and
mortgage advisory services; financial management; fund investment services;
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