Decision Nº O/334/20 from Intellectual Property Office - (Trade market), 23 June 2020
| Judge | Ms S Wilson |
| Date | 23 June 2020 |
| Administrative Decision Number | O/334/20 |
| Registration Number | UK00003369340 |
| Court | Intellectual Property Office (United Kingdom) |
O/334/20
IN THE MATTER OF APPLICATION NO. UK00003369340
BY MY SHADOW LIMITED
TO REGISTER THE TRADE MARK:
Black Tack
IN CLASSES 1 AND 17
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 416598 BY
BOSTIK LIMITED
2
BACKGROUND AND PLEADINGS
1. On 23 January 2019, My Shadow Limited (“the applicant”) applied to register the
trade mark Black Tack in the UK. The application was published for opposition
purposes on 15 March 2019 and registration is sought for the goods shown in
paragraph 45 below.
2. On 14 June 2019, Bostik Limited (“the opponent”) opposed the application based
upon sections 5(2)(b), 5(3), 5(4)(a) and 3(6) of the Trade Marks Act 1994 (“the Act”).
Under sections 5(2)(b) and 5(3) of the Act the opponent relies upon UK registration
no. 1130819 for the trade mark BLU-TACK. The opponent’s mark was registered on
22 March 1980 and the opponent relies upon all of the goods for which it is registered,
namely:
Class 16 Adhesive materials (stationery).
3. Under section 5(2)(b), the opponent claims that there is a likelihood of confusion
because the respective marks are similar, and the goods are identical or similar.
4. Under section 5(3), the opponent claims that it has a reputation for all of the goods
for which the mark is registered and that use of the applicant’s mark would, without
due cause, take unfair advantage of, or be detrimental to, the distinctive character
and/or reputation of the earlier mark.
5. Under section 5(4)(a), the opponent claims that the sign BLU-TACK has been used
throughout the UK since at least 1970 in respect of:
“Adhesive materials (stationery); removable and reusable adhesive putty.”
6. Under section 3(6), the opponent states:
“The application was filed in bad faith because the Applicant sought to abuse
the trade mark system and because the applicant had no intention to use the
mark in relation to the goods covered in the application.
3
The Opponent’s BLU-TACK product has many (innumerable) uses, including
holding photographic equipment in place. The Applicant uses its Black Tack
product in this area, as clearly stated on their website […]
The Applicant avoided filing in class 16 and excluded “household or stationery”
in multiple places in the class 1 and class 17 specifications. The Applicant was
clearly aware of the Opponent’s rights and sought to evade detection and
challenge by filing in different classes and by excluding goods that might conflict
with the Opponent’s registration. The application as filed, does not reflect the
true intention of the Applicant. The Applicant uses the mark on a product that
is, by the Applicant’s own admission, a BLU-TACK substitute but filed a tactical
application to mask this. The application was clearly filed in bad faith both
because it was an attempt to abuse the trade mark system and because there
was no bona fide intention to use the mark in relation to the goods covered.”
7. The applicant filed a counterstatement denying the claims made.
8. Both parties filed evidence in chief. The opponent filed evidence in reply. A hearing
took place before me on 1 June 2020, by video conference. The opponent was
represented by Ms Amy Reynolds of Field Fisher LLP and the applicant was
represented by Mr Michael Coyle of Lawdit Solicitors. Both parties filed skeleton
arguments in advance of the hearing.
EVIDENCE
The Opponent’s Evidence in Chief
9. The opponent filed evidence in chief in the form of the witness statement of Amy
Denise Reynolds dated 12 November 2019 and the witness statement of Matthew
Whitehouse dated 7 November 2019. Mr Reynolds is the opponent’s representative in
these proceedings and Mr Whitehouse is the opponent’s Marketing Director. I have
read both statements in their entirety and summarise them only to the extent that I
consider necessary below.
To continue reading
Request your trial