Trade mark decision

BL Number

O/372/00

Decision date

6 October 2000

Hearing officer

Mr M Foley

Mark

CODAS

Classes

09, 21, 37, 41

Applicants

C. D. S. Computer Design Systems Limited

Opponents

Coda Limited

Opposition

Section 3(6) and Sections 5(2) & 5(4)(a)

Result

Section 5(2)(b) - Opposition partially successful

Section 5(4)(a) - Opposition failed

Section 3(6) - Opposition failed

Points Of Interest

• 1. Honest Concurrent Use is a mechanism which enables a used mark to proceed to advertisement in the face of an existing registered right. Once opposition proceedings are in train the concurrent use cannot overcome objections raised under Section 5. However, where two marks have co-existed in the market place for many years and no confusion has arisen, this is a circumstance which the Hearing Officer can take into account but he must ensure that if the applicants mark is allowed to proceed it should only be in respect of the specific goods/services on which there has in fact been concurrent use.

Summary

The Hearing Officer concluded under Section 5(2)(b) that the opponents CODA mark (plus variations thereof) were confusingly similar to the applicants CODAS mark and that the same goods and services and similar goods and services were at issue. Thus from a preliminary point of view the opposition was successful. However, the applicants had proceeded on the basis of honest concurrent use and it appeared they had used their mark from 1975 which was some six years prior to the opponents use of their mark. Up to the relevant date there had been some fourteen years concurrent use and no confusion had occurred. In the light of these facts the Hearing Officer concluded that if the applicants restricted their application to a limited range of goods in class 9, their application would be allowed to proceed.

Insofar as Section 5(4)(a) was concerned the Hearing Officer noted the applicants prior use, as compared to the opponents, and concluded that if the applicants continued to use their mark normally, as reflected in the proposed restricted specification, there would be no misrepresentation or damage to the opponents mark. Opposition on this ground failed. With regard to Section 3(6) there was insufficient evidence filed to justify a finding of bad faith.

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