Trade mark decision

BL Number

O/197/98

Decision date

12 October 1998

Hearing officer

Mr M Knight

Mark

CONTURA

Classes

21

Applicant

Oral-B Laboratories (a division of Gillette Canada Inc)

Opponent

Addis Limited

Opposition

Sections 9 & 10 of the Trade Marks Act 1938 (as amended)

Result

Section 9: - Opposition failed

Section 10: - Not considered.

Points Of Interest

• 1. In parallel opposition proceedings under the Trade Marks Act 1994 the Hearing Officer allowed the opponents mark WISDOM CONTOUR to proceed in the face of opposition from these applicants. (See BL O/196/98).
• 2. Both decisions were appealed to the High Court. By way of an order handed down on 15 July 1999 Mr Justice Laddie overturned the Hearing Officer’s decision in this case deciding that the mark CONTURA was too close to COUNOUR and thus not registrable under the Trade Marks Act 1938. As the CONTURA application was the basis for opposition to the WISDOM CONTOUR mark in Class 21 that opposition also fell away.
• On appeal to the Court of Appeal Mr Justice Laddie’s decision was upheld. (15 November 2000).

Summary

The opponents had initially raised grounds of opposition under Sections 11 and 12 of the 1938 Act but these grounds were withdrawn at the Hearing.

In relation to the grounds under Sections 9 & 10 of the Act the opponents contended that the mark in suit was too close to the word CONTOUR and thus not a distinctive mark. In support of their application the applicants pointed to the fact that they had obtained registrations for the mark CONTOUR in Classes 3, 8 and 16 and that the Registry had previously accepted CONTURA for registration in Part A of the Register.

In his consideration under Section 9 of the Act the Hearing Officer considered whether the mark at issue was invented (Section 9(1)(c)) or had a reference to the character or quality of the goods (Section 9(1)(d)).

In relation to invention he considered the following criteria.

(i) an invented word must be newly coined,

(ii)it must not be a word which conveys some obvious meaning to an ordinary English-speaking citizen within the jurisdiction,

(iii) it must not be a mere combination of two English words, though it may be a compound word,

(iv) it may be traceable to a foreign source, but a foreign word will not qualify merely because it has not been current in English usage,

(v) it may be a word containing an allusion to the character or quality of the goods, provided that allusion be covert and skilful,

(vi) it may not be a word which has undergone a mere variation of its orthography or termination, if, in its slightly varied form, it still conveys the idea of the original word, or if it refers to the character or quality of the goods.

In the Hearing Officer’s view the mark in suit met all the criteria listed above and he concluded that it was invented.

In the light of his decision under Section 9(1)(c) the Hearing Officer considered the mark in suit to be different from the word CONTOUR and thus it was not descriptive of the character or quality of the goods applied for. Nor would it stop others from using the word CONTOUR in a descriptive context if they so wished. Opposition thus failed on the Section 9 ground.

As the Hearing Officer concluded that he did not, at this stage in the proceedings, have power to accept an application for registration in Part A, on transfer to Part B (Section 10), that Section was not considered.

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