Decision Nº O/303/17 from Intellectual Property Office - (Trade market), 26 June 2017
| Judge | Mr Daniel Alexander QC |
| Registration Number | UK00003031086 |
| Date | 26 June 2017 |
| Administrative Decision Number | O/303/17 |
| Court | Intellectual Property Office (United Kingdom) |
O-303-17
IN THE MATTER OF APPLICATION NO 3031086
BY PIA HALLSTROM LIMITED TO REGISTER THE TRADE MARK
PIA HALLSTROM IN CLASSES 14, 18 AND 25
AND IN THE MATTER OF OPPOSITION THERETO UNDER NO 401741
BY JOHN RICHARD BEALE
DECISION
INTRODUCTION
1. On 18 November 2013, Pia Hallstrom Limited (“the applicant/respondent”)
applied under the Trade Marks Act 1994 (“the Act”) for registration of the mark
PIA HALLSTROM in respect of the following list of goods:
Class 14: Jewellery articles; Jewellery being articles of precious metals;
Jewellery being articles of precious stones.
Class 18: Handbags, purses and wallets.
Class 25: Clothing, footwear, headgear.
2. On 11 February 2014, John Richard Beale (“the opponent”) opposed the
application on the grounds that it was contrary section 5(2)(b) of the Act
because it was said to be too similar to two earlier marks in the name of the
opponent and in respect of identical or similar goods and that, because of these
similarities, a likelihood of confusion exists. The opponent also relied on section
5(4) of the Act. The relevant details of the two earlier marks relied upon are (as
set out in the decision):
2
2311309 PIA
Filing date:
21 September 2002
Date of entry in
register: 7 March
2003
Class 14: Jewellery made from gold, silver, precious and
semi
-precious stones, costume jewellery, clocks and
watches, silver plated trinket boxes and pill boxes.
Class 18: Handbags, purses and travelling bags made of
leather and of textile.
and
Community Trade
Mark (CTM)
4077996
PIA
Filing date:
18 October 2004
Date of entry in
register: 17 January
2006
Class 14: Precious metals and their alloys and goods in
precious metals or coated therewith, not included in
other classes; jewellery, precious stones; horological
and chronometric instruments.
Class 18: Leather and imitations of leather, and goods
made of these materials and not included in other
classes; animal skins, hides; trunks and travelling bags;
umbrellas, parasols and walking sticks; whips, harness
and saddlery.
Class 25: Clothing, footwear, headgear.
THE APPEAL
3. The hearing officer rejected the opposition and the opponent appealed. The
appeal came before me at a hearing on 3 May 2017. The opponent’s Grounds
of Appeal challenged each aspect of the decision.
4. The opponent was represented and provided a comprehensive skeleton
argument as well as helpful and well-considered oral submissions. Ms
Hallstrom’s company, the applicant, was not represented. Owing to an
administrative mix-up, there was no shorthand writer but the opponent agreed
that the hearing could go ahead without.
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