References: [2006] UKIntelP o22406
Links: Bailii
Coram: Mrs J Pike
ICO Section 5(2)(b): Invalidity action failed. Section 5(3): Invalidity action failed
Section 5(4)(a): Invalidity action failed. Section 56(2): Invalidity action failed
The applicant in these proceedings is the owner of a number of registered marks (UK & CTM) such as TOYS’R’US, MUMS’R’US, BABIES’R’US, ‘R’US etc in a range of classes. It also claimed extensive user of its marks, particularly TOYS ‘R’ US, but the evidence filed to support this claim was not well focused. In its evidence it also provided brief details of a number of disputes where a decision had been in its favour.
In these proceedings the registered proprietor did not respond to the filing of the application for invalidity.
Under Section 5(2)(b) the Hearing Officer accepted that there was some similarity between the respective marks because of the presence of the element ‘R’US but he was unable to find any goods of services within the applicant’s specifications which were identical or similar to the building elements in the registered proprietor’s Class 19 registration. He, therefore, went on to find that the applicant failed on this ground.
As regards the ground under Section 5(3) the Hearing Officer noted that the applicant had supplied very limited information about the extent of its reputation in the UK. However, even if he accepted that it had the necessary reputation in its mark TOYS’R’US, which he knew was likely to be the case from his own knowledge, he considered that there were considerable differences between the respective marks and bearing in mind the differences in the respective goods, he did not see that there was any likelihood that the registered proprietor would gain an unfair advantage or that there would be any detriment to the reputation of the applicant’s mark. The applicant thus failed on this ground.
The applicant also failed on the grounds under Sections 5(4)(a) and 56(2) because the Hearing Officer was of the view that its case was no stronger in respect of these grounds as compared to the other grounds dealt with above.
Statutes: Trade Marks Act 1994 5(2)(b)
