No likelihood of confusion between 'bet' marks for betting services
In Collegewood Street Limited v TBH Limited, the hearing officer, acting on behalf of the controller, has dismissed an opposition against the registration of the mark BETPACK.
On October 12 2009 Collegewood Street Limited applied to register the word mark BETPACK in Class 41 of the Nice Classification. On advertisement the application was opposed by TBH Limited. Evidence was filed by the applicant and the opponent under Rules 20, 21 and 22 of the Trademarks Rules.
The opponent relied on its Community trademark BETDAQ, registered in Classes 9, 36 and 41.
The hearing officer held that the opponent’s argument in relation to Section 8 of the Trademarks Act 1996 were misguided, as Section 8 “is concerned with absolute grounds for refusal of an application and must be considered in isolation from any other mark. It does not concern itself with confusion because of the existence of earlier marks”.
In carrying out an assessment of the respective marks on the basis of aural, visual and conceptual similarity, the hearing officer noted that it is well established that the start of a word mark is generally the most important in terms of its visual and aural identity. However, the hearing officer distinguished the current case from the decision of the Trademarks Office in IMITAG v IMIGRAN (Pinewood Laboratories Limited v Glaxo Group Limited (February 4 2009)) on the basis that, in the aforementioned case, “the prefix 'imi' was quite distinctive as it had no meaning in the context of the relevant goods and its use in both marks enhanced the overall similarity between them”. The hearing officer noted that the opening syllable in the respective marks in the current proceedings “is 'bet', which is totally descriptive of the services offered by both parties and, therefore, it is neither the distinct nor the dominant element of the marks”.
The hearing officer, in holding that there was no likelihood of confusion, referred to the fact that the users of the applicant’s and opponent’s services must be aged 18 or over and therefore they are legally mature, make adult decisions and understand the activity in which they are engaged. The hearing officer noted that the opponent does not have betting shops on the high street, but offers its services exclusively online. He referred to the fact that users must set up an account online and choose a username and password in order to avail of the opponent’s services. Therefore, he did not see how, having established an account, a user could mistakenly enter the applicant’s site and place a bet.
The hearing officer noted that there are many betting exchanges in operation using the prefix 'bet' and consumers are able to differentiate between these services by virtue of the different suffixes.
The hearing officer dismissed the evidence of confusion adduced by the opponent. He said that the invoice which had been mistakenly sent by a supplier to the applicant was not confusion in the trade “which Section 10(2) of the act seeks to avoid, but a mere administrative error caused by someone making an assumption and acting on that assumption. Importantly, the advertisement agency that issued the invoice was not a consumer of the opponent’s services, it was a supplier”.
Colette Brady, DFMG Solicitors, Dublin
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