ITMA 322 APRIL 2005

Case comments
On Your Bikes
In the matter of application no 2315408 by Professional Cycle Manufacturing Limited and in the matter of
opposition no 92249 thereto by Halfords Limited, 31 August 2005, Richard Arnold QC
Professional Cycle Manufacturing Ltd (the applicants)
applied for registration on 9 November 2002 of their
trade mark EXCEL in Class 12 for “bicycles”. The UK
Registry cited the trade mark APOLLO EXCEL
against the applicants’ mark, which was registered for
“bicycles; tricycles; parts and fittings for all of the
aforesaid goods” in class 12. The applicants had overcome
the objection on the basis of honest concurrent
use of the mark.
Halfords Ltd (the opponents) opposed the applicants’
mark under section 5(2)(b) 1 for their own mark
APOLLO EXCEL and also with respect to another
CTM registration for EXEL in Classes 7, 8 and 12
(“land vehicles”), owned by Exel SA, a French company,
which is not related to the opponents.
The hearing officer found that the applicants’ mark
was similar to the opponents’ registration and upheld
the ground of opposition under section 5(2)(b).
Regarding the EXEL trade mark, the hearing officer
stated that a mark which was not cited during the
examination couldn’t be used to oppose except by its
proprietors. The applicants and the opponents
appealed against this decision.
In the appeal, the Appointed Person held that the
marks were not in concurrent use during the relevant
period and there is a likelihood of confusion in the
minds of the relevant public. Allowing the opponents’
appeal, it was also held that there is a likelihood of
confusion between the applicants’ mark and the EXEL
trade mark.
Arguments before the hearing officer
The opponents had argued before the hearing officer
that the applicants’ mark EXCEL was confusingly
similar to their trade mark APOLLO EXCEL and to
the EXEL trade mark of Exel SA. In response to the
argument by the applicants that the opponents had
not shown any evidence of confusion, the opponents
responded that the absence of evidence of actual confusion
was immaterial since the test was one of normal
and fair use.
The applicants contended that the opponents had
not filed evidence to justify its entitlement to base its
opposition on CTM registration of EXEL trade mark.
They also argued that their mark and the opponents’
mark would give rise to any confusion in the market.
The applicants relied on CODAS Trade Mark [2001]
RPC 14 and argued that the absence of evidence of
confusion despite a lengthy period of honest concurrent
use by the applicant showed that there was no
likelihood of confusion.
During the hearing, the hearing officer had drawn
the attention of the opponents’ solicitors to the commentary
on section 7(2) 2 FOOTNOTE in paragraph 8-
115 of Kerly’s Law of Trade Marks (13th ed), which
states:
“Curiously section 7(2) refers only to an opposition
by the proprietor of the earlier trade mark or other
earlier right. On the words of the section it appears
that if an opposition is entered by a party other than
the proprietor of the earlier trade mark or other earlier
right and such a party relies upon that earlier trade
mark or other earlier right, as he is entitled to, then
the Registrar must take into account honest concurrent
use and, in an appropriate case, allow the mark
to proceed to registration. That party would then
have to bring an application for a declaration under
section 47 following registration. It is hard to reconcile
this with the mandatory words of Article 4 of the TM
Directive.”
The opponents’ solicitors responded that they
would concentrate on their trade mark and when the
hearing officer asked if they want to withdraw the
opposition under the EXEL mark, they replied that it
would appear necessary to do so. However, the opponents’
solicitors wrote to the hearing officer after the
hearing that they could rely upon EXEL registration,
because the examiner did not raise this mark as a citation
against the applicants’ mark, and the said mark
has not been overcome on the grounds of honest concurrent
use and section 7(2) does not apply to the said
mark. The opponents’ solicitors requested the hearing
officer to reconsider the matter and give them an
opportunity to address the issue.
Continued on page 16
1 A trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for
goods or services identical with or similar to those for which the earlier mark is protected, there exists a likelihood
of confusion on the part of the public, which includes the likelihood of association with the earlier trade
mark.
2 Section 7 (1) This section applies where on an application for the registration of a trade mark it appears to the
registrar
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,
but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use of the trade
mark for which registration is sought.
(2) In that case the registrar shall not refuse the application by reason of the earlier trade mark or other earlier
right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade
mark or other earlier right.
December 2005 ITMA Review 15