Geoffrey Inc v Paul Fordham

This matter concerned an opposition by Geoffrey Inc. to the registration of a trade mark by Paul Fordham. The dispute centred on whether the proposed trade mark would be likely to deceive or cause confusion, given the existence of existing registrations owned by Geoffrey Inc. The decision was made by Deirdre O’Brien.

The court was required to determine if the applicant's proposed trade mark, when used in relation to goods in class 28, would be likely to deceive or cause confusion with existing registered trade marks owned by the opponent, specifically those incorporating the "R US" element. This involved considering the extent to which trade marks with the "R US" suffix were in common use in the relevant market and how consumers might perceive trade marks with this common element.

The court reasoned that the presence of a common element in trade marks can lead purchasers to pay more attention to the distinguishing features, but this principle applies when the common element is in extensive use across the market. The court noted that while there were some registrations for "R US" trade marks, one registration alone did not demonstrate common use in relation to class 28 goods. Crucially, the court found that there was no evidence before it to suggest that "R US" trade marks were in common use in the specific market for the goods in question, distinguishing the present case from previous decisions where such common use had been established. The court emphasised that each case must be decided on its own facts.