Trade mark decision

BL Number

O/268/04

Decision date

23 August 2004

Hearing officer

Mr David Kitchin QC

Mark

STEELCO

Classes

20

Applicant

Steelco Limited

Opponent

Steelcase Inc

Opposition

Sections 5(2)(b). Appeal to the Appointed Person

Result

Section 5(2)(b): - Appeal to the Appointed Person dismissed.

Points Of Interest

• 1. See also Hearing Officer's decision dated 30 January 2004 (BL O/028/04).
• 2. Reputation of an earlier mark is one of the factors to be taken into account in considering 'the likelihood of confusion'. It is not limited to, for example, well known marks or marks having an extensive reputation.

Summary

In the Registry the opponent had opposed the mark in suit on the basis that it owned registrations for the mark STEELCASE in respect of the same and similar goods as those of the applicant. It also claimed a reputation in its mark because of extensive use. Opposition failed, the Hearing Officer deciding that the respective marks STEELCO and STEELCASE were not so similar as to lead to confusion of the public.

On appeal the opponent argued that the Hearing Officer had given insufficient weight to the reputation of the STEELCASE mark and that he ought properly to have found in favour of the opponent. The Appointed Person carefully reviewed the Hearing Officer’s decision and concluded that he had arrived at the right decision. While it was a fact that the STEELCASE mark as a whole had acquired a reputation at the relevant date, the element STEEL still retained its descriptive character in relation to steel furniture or steel framed furniture and this aspect had to be kept in mind when comparing the mark STEELCASE with another mark such as STEELCO which contained the same descriptive word. Hearing Officer’s decision upheld and appeal dismissed.

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