Orbis Risk Management Others (Trade Mark: Opposition): IPO 25 Apr 2003

IPO Three separate oppositions, not consolidated, but as same issues involved only one decision.
The opponents’ opposition was based on their ownership of registrations in Classes 9, 16, 35, 41 and 42 of their mark CORBIS. The opponents claimed use of their mark in relation to computer readable media from 1994 but only gave turnover figures for the year 2000. No details of sales were provided before the material date of June 2000. Some advertising took place between September 1999 and December 2000. The Hearing Officer accepted that their mark CORBIS was an inherently distinctive mark.
The applicants also claimed extensive use of their mark in relation to property protection services with turnover increasing from andpound;5.3m in 1996/7 to andpound;33.5m in 2000/2001. They claimed that the respective firms operated in totally different trade areas and there was no likelihood of confusion.
The Hearing Officer noted the principal activities of the two parties but under Section 5(2)(b) noted that he must compare the respective specifications. Having carefully considered the matter he concluded that at best there was only a slight possibility that similar goods were at issue. As regards the respective marks he considered that ORBIS and CORBIS were not similar and he did not believe that the public would consider that the device element which preceded the word ORBIS would be seen as a letter ‘C’ and thus increase the likelihood of confusion. Taking an overall view of the matter he did not consider that the marks in their totality were similar and as there was little of any similarity in the respective goods and services, he considered there was no likelihood of confusion. Opposition failed on this ground.
Under Section 5(4)(a) – Passing Off – the Hearing Officer noted that the opponents had filed insufficient evidence to establish that they had a goodwill in their mark. Thus they must also fail in their opposition on this ground.
Mr M Reynolds
[2003] UKIntelP o11803, O/118/03

Updated: 31 March 2021; Ref: scu.455536