Decision Nº O/541/20 from Intellectual Property Office - (Trade market), 30 October 2020
| Judge | Mrs T Perks |
| Administrative Decision Number | O/541/20 |
| Registration Number | UK00003371412, UK00003371413, UK00003371440, UK00003371441, UK00003371445, UK00003388852 |
| Court | Intellectual Property Office (United Kingdom) |
| Date | 30 October 2020 |
O-541-20
TRADE MARKS ACT 1994
IN THE MATTER OF CONSOLIDATED PROCEEDINGS INVOLVING:
FIVE TRADE MARK APPLICATIONS (NOS. 3371413, 3371440, 3371441,
3371445, 3371412)
IN THE NAME OF
BIGHIT ENTERTAINMENT CO., LTD.
FOR MARKS WHICH CONSIST OF THE FOLLOWING:
AND OPPOSITIONS (NOS. 416799, 416803, 416804, 416805, 416980) THERETO
(RESPECTIVELY)
BY CANONGATE BOOKS LIMITED
AND
A TRADE MARK APPLICATION (NO. 338852)
IN THE NAME OF CANONGATE BOOKS LIMITED FOR THE MARK:
AND OPPOSITION (NO. 417650) THERETO
BY BIGHIT ENTERTAINMENT CO., LTD.
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Background and pleadings
1. These consolidated proceedings concern six trade mark oppositions between
Canongate Books Limited (“Canongate”) and BigHit Entertainment Co.,
Ltd.(“BighHit”), who essentially oppose each other’s trade mark applications. Five
oppositions are brought by Canongate against applications to register trade marks in
the name of BigHit. A further opposition is brought by BigHit against an application to
register a trade mark in the name of Canongate.
BigHit’s applications
2. The details of the trade mark applications filed by BigHit are as follows:
UK 3371412 (opposition no. 416980)
(“the Class 9 Application”)
Filing date: 30 January 2019
Date of publication: 29 March 2019
Class 9:
Goggles; emergency and rescue apparatus; batteries and battery
chargers; apparatus for broadcasting, recording, transmission or reproduction of
sound, data or images; CDs; DVDs; downloadable multimedia files; mounting
devices for cameras and monitors; prot
ective shoes; physical and chemical
laboratory apparatus and instruments; range finders for golf; sunglasses;
eyeglasses; swimming face masks; electrified fences; electricity measuring
apparatus and instruments; electronic cables; blank record disks; electronic
apparatus and instruments for recording and/or reproducing music; ear phones;
headphones; covers for smartphones; computer programs and software; recorded
computer game software; downloadable game programs, provided from online;
downloadable smart ph
one application (software); computer hardware and
computer peripheral devices; integrated circuit chips for use in smart cards; video
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game cartridges and cassettes; helmets; protective suits [against accident or injury];
phonograph records; downloadable mu
sic files; DVD featuring music and music
performances; downloadable digital video recordings; electronic coupons; animated
cartoons; electronic publications, downloadable.
UK 3371413 (opposition no. 416799)
(“the Class 16 Application”)
Filing date: 30 January 2019
Date of publication: 29 March 2019
Class 16: Adhesives for stationery and household use; stickers and sticker albums;
paper patterns; packing [cushioning, stuffing] materials of paper or cardboard;
typewriters and office requisites [except furniture]; plastic materials for packaging;
labels of paper or cardboard; flags and pennants of paper; disposable
housebreaking pads of paper or cellulose for pets; fitted toilet lid covers of paper;
paper tissues; school supplies [stat
ionery]; passport cases; boxes of paper or
cardboard; paper bags; paper covers for upholstery; graphic prints; printed matter
(except books and periodicals); graphic representations; paper for printing
photographs; books; printed publications.
UK 3371445 (opposition no. 416805)
(“the Class 35 Application”)
Filing date: 30 January 2019
Date of publication: 29 March 2019
Class 35:
Providing business and marketing information; brand management;
business management of performing artists; talent agency services [business
management of performing artists]; retail store services featuring confectionery;
retail store services featuring pr
ocessed coffee; retail store services featuring
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