Decision Nº O/343/20 from Intellectual Property Office - (Trade market), 8 July 2020
| Judge | Mr M Bryant |
| Date | 08 July 2020 |
| Registration Number | UK00003292175, UK00003353445, UK00003386308 |
| Administrative Decision Number | O/343/20 |
| Court | Intellectual Property Office (United Kingdom) |
Page 1 of 57
O-343-20
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATIONS NOS 3292175 AND 3353445 IN THE NAME
OF ZAFER SAYGILIER IN RESPECT OF THE FOLLOWING TWO TRADE MARKS
AND
SOHO ROOMS
AND OPPOSITIONS
UNDER NOS 412869 AND 415750 BY SOHO HOUSE LIMITED
AND
IN THE MATTER OF APPLICATION NO 3386308
FOR THE TRADE MARK
SOHO BEDROOMS
IN THE NAME OF SOHO HOUSE LIMITED
AND THE CONSOLIDATED OPPOSITION THERETO
UNDER NO 416588
BY ZAFER SAYGILIER
Page 2 of 57
Background and pleadings
1) Zafer Saygilier (“Party B”) applied to register trade marks 3292175 and 3353445.
The relevant details of both these applications are provided below:
3292175
Filing date: 23 February 2018
Publication date: 23 March 2018
Class 35: Advertising; marketing; sales promotions; business information;
online ordering services; consultancy, information and advisory services to all
the aforesaid services.
Class 38: Telecommunications; broadcasting services; electronic exchange
of data, video, audio, text via computer and telecommunication networks;
providing online forums; communication by online blogs; chat room services;
consultancy, information and advisory services to all the aforesaid services.
Class 41: Entertainment; music and night club services; discotheque
services; consultancy, information and advisory services relating to all the
aforesaid services.
Class 43: Provision of food and drink; hotel services; restaurant, cafe and bar
services; catering services; sandwich and snack bar services; preparation and
serving of food and beverages; information and advisory services to all the
aforesaid services.
Page 3 of 57
3353445
SOHO ROOMS
Filing date: 14 November 2018
Publication date: 14 December 2018
Class 43: Provision of food and drink; hotel services; restaurant, cafe and bar
services; catering services; sandwich and snack bar services; preparation and
serving of food and beverages; information and advisory services to all the
aforesaid services.
2) On 22 June 2018 and 12 March 2019 respectively, Soho House Limited (“Party
A”) opposed the applications. In respect of opposition 412869 against Party B’s
SOHO ROOMS and device mark, it relies upon the following two registrations:
European Union Trade Mark (“EUTM”) 12214251
SOHO HOUSE
Filing date: 10 October 2013
Date of entry in register: 23 May 2014
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities;
Academies [education]; Amusement parks; Amusements; Animal training; Arranging and
conducting of colloquiums; Arranging and conducting of concerts; Arranging and conducting
of conferences; Arranging and conducting of congresses; Arranging and conducting of
seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops
[training]; Arranging of beauty contests; Boarding schools; Booking of seats for shows;
Bookmobile services; Calligraphy services; Cinema presentations; Circuses; Club services
[entertainment or education]; Coaching [training]; Conducting fitness classes;
Correspondence courses; Disc jockey services; Discotheque services; Dubbing; Education
information; Educational examination; Electronic desktop publishing; Entertainer services;
Entertainment information; Film production, other than advertising films; Gambling; Game
services provided on-line from a computer network; Games equipment rental; Gymnastic
instruction; Health club services [health and fitness training]; Holiday camp services
[entertainment]; Language interpreter services; Layout services, other than for advertising
purposes; Lending libraries; Microfilming; Modelling for artists; Movie studios; Music
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