Decision Nº O/272/07 from Intellectual Property Office - (Trade market), 17 September 2007

CourtIntellectual Property Office (United Kingdom)
JudgeMr D Landau
Case OutcomeSection 47(1) & Section 3(6): Invalidity failed. Section 47(2)(a): & Section 5(2)(a): Invalidity successful in respect of all services other than ‘project management services’.
Registration NumberUK00002373011
O-272-07
IN THE MATTER OF REGISTRATION NO 2373011
IN THE NAME OF STICKS & STONES LIMITED
OF THE TRADE MARK:
STICKS & STONES
IN CLASSES 37 AND 42
AND
THE APPLICATION FOR A DECLARATION
OF INVALIDITY THERETO UNDER NO 82680
BY
FIKS TRADING LTD
2 of 22
In the matter of registration no 2373011
in the name of Sticks & Stones Limited
of the trade mark:
STICKS & STONES
in classes 37 and 42
and the application for a declaration of invalidity
thereto under no 82680
by Fiks Trading Ltd
Introduction
1) On 27 October 2006 Fiks Trading Ltd, which I will refer to as Fiks, made an
application for the invalidation of registration no 2373011. The application for
registration, under no 2373011, was made on 14 September 2004 and the registration
procedure was completed on 25 February 2005. The registration is for the trade mark
STICKS & STONES. The trade mark is in the name of Sticks & Stones Limited, which
I will refer to as SSL The trade mark is registered for:
building services; construction services; refurbishment services; installation services;
project management services; consultancy and advisory services relating to the
aforesaid;
design services, consultancy and advisory services relating thereto.
The above services are in classes 37 and 42 respectively of the Nice Agreement
concerning the International Classification of Goods and Services for the Purposes of the
Registration of Marks of 15 June 1957, as revised and amended.
2) Fiks is the owner of United Kingdom trade mark registration no 2337992 of the trade
mark STICKS & STONES. The application for registration of this trade mark was
made on 17 July 2003; the registration process was completed on 25 February 2005. The
trade mark is registered for wood flooring, natural stone flooring; these goods are in class
19 of the Nice Agreement concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and
amended.
3) Fiks states that the trade marks are the same. It states that the businesses of the two
sides are identical in that they both supply wood and stone flooring. Fiks states that in
this area of the marketplace it is common for traders to both sell and install the flooring
and so there is a clear overlap between the goods and services. Fiks claims that it is,
therefore, highly likely that confusion between the respective trade marks would occur in
the marketplace. Consequently, the trade mark of SSL was registered contrary to section
5(2)(b) of the Trade Marks Act 1994 (the Act).

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