Dream Dazzlers in a world of their own

Geoffrey Inc (the Toys R Us people) applied to register the DREAM DAZZLERS trade mark for role play toys and playthings. Metro SB-Handel AG, who are part of the same group of companies as Makro Self Service Wholesalers, opposed the grant of the application.

Makro’s case was that they had used the trade mark DAZZLERS since 1984 for festive Christmas decorations and ornaments. It therefore followed, in Makro’s opinion, that the purchasing public could be confused into thinking that products bearing the DREAM DAZZLERS trade mark were theirs. They also opposed the application on the grounds of passing off.

In the ruling given by the UK Registry on 21 January, the Hearing Officer came to the view that the differences in the respective goods were such that it was unlikely that a UK consumer would form an association between the mark applied for (DREAM DAZZLERS) and Makro’s earlier mark or that they would think that the two sets of products came from the same company. He also rejected the claim of passing off on the ground that Makro’s reputation and goodwill in DAZZLERS would not be damaged by the new registration and use of DREAM DAZZLERS by Geoffrey Inc.

Commenting on the decision, Stephen James, President of the Institute of Trade Mark Attorneys said:

“Occasionally, it takes a while to obtain a trade mark registration, though it is well worth the battle as the result is strong trade mark protection for a brand name that could be worth a fortune in the future.”

“In this case both parties were represented by professional firms of trade mark practitioners. It is worth bearing in mind that professional advice is always available through members of ITMA and details of members in the UK are available on the website www.itma.org.uk as well as lots of other useful information about the world of trade marks.”

NOTE FOR EDITORS

The Institute of Trade Mark Attorneys (ITMA) is the UK body dedicated to the protection of trade marks. It has over 1,600 members and is one of the few professional bodies of practitioners concerned primarily with trade mark matters throughout the world. More information is available on the ITMA website at: www.itma.org.uk.

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