Decision Nº O/424/20 from Intellectual Property Office - (Trade market), 7 September 2020
| Judge | Ms S Wilson |
| Date | 07 September 2020 |
| Administrative Decision Number | O/424/20 |
| Registration Number | UK00003361972 |
| Court | Intellectual Property Office (United Kingdom) |
O/424/20
IN THE MATTER OF APPLICATION NO. UK00003361972
BY COLAV FRICKERS
TO REGISTER THE FOLLOWING MARK:
Teacher Insight
IN CLASSES 9 AND 42
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 417000
BY EQUIN LIMITED
2
BACKGROUND AND PLEADINGS
1. On 19 December 2018, Colav Frickers (“the applicant”) applied to register the trade
mark Teacher Insight in the UK. The application was published for opposition
purposes on 3 May 2019 and registration is sought for the goods and services listed
in paragraph 27 below.
2. On 16 July 2019, Equin Limited (“the opponent”) opposed the application based
upon sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (“the Act”). For
the purposes of its opposition based upon sections 5(2)(b) and 5(3), the opponent
relies on the following trade mark:
UK registration no. 3294492
Filing date 5 March 2018; registration date 3 August 2018
3. For the purposes of its opposition based upon section 5(2)(b), the opponent relies
on some of the goods and services for which the earlier mark is registered, namely:
Class 9 Application software; Communication software; Education software;
Educational software; Software; Software; Software and applications for
mobile devices; Scientific research and laboratory apparatus,
educational apparatus and simulators; Teacher software; all the
aforesaid being provided to schools and educational establishments to
help them monitor and tack pupil progress.
Class 42 Certification of educational services; Quality assessment; Software as a
service; Software as a service [SAAS] services; Software as a service
[SaaS].
4. The opponent claims that there is a likelihood of confusion because the respective
marks are similar, and the goods and services are identical or similar.
3
5. For the purposes of its opposition based upon section 5(3), the opponent claims a
reputation in respect of all of the goods and services for which the earlier mark is
registered, as set out in the Annex to this decision. The opponent claims 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.
6. For the purposes of its opposition based upon section 5(4)(a), the opponent relies
upon the sign INSIGHT. The opponent claims to have used the sign throughout the
UK since 2007 in respect of the following goods and services:
“Application software; Communication software; Computer software; Education
software; Educational software; Software; Teacher software; Software being
provided to schools and educational establishments to help them monitor and
track pupil progress; Educational assessment services; Providing computer-
delivered educational testing and assessments; Teaching assessments for
counteracting learning difficulties; Analysing educational test scores and data
for others; Computer assisted education services; Computer based educational
services; Information relating to education, provided on-line from a computer
database or the internet; Management of education services; Providing
information about education; Setting of educational standards; Teacher training
services; Training of teachers; Provision of educational examinations and tests;
Quality assessments; Software as a service.”
7. The applicant filed a counterstatement denying the claims made.
8. The applicant is unrepresented and the opponent is represented by Stephens
Scown LLP. Only the opponent filed evidence. Neither party requested a hearing and
neither party filed written submissions in lieu. This decision is taken following a careful
perusal of the papers.
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