Neways, Inc v Wella AG

This decision concerns an opposition by Wella AG to the registration of a trade mark application by Neways, Inc. The applicant sought to register a trade mark, but Wella AG opposed this application. The primary issue before the delegate of the Registrar of Trade Marks was whether to grant Neways, Inc. an extension of time to serve evidence in answer to the opposition.

The legal issues before the delegate were twofold: firstly, whether Neways, Inc. had demonstrated "special circumstances" to justify an extension of time for serving its evidence in answer to Wella AG's opposition, and secondly, if the opposition were to proceed, whether the applicant's proposed trade mark was deceptively similar to Wella AG's registered trade mark, such that it was likely to deceive or cause confusion, under sections 28(a) and 33 of the *Trade Marks Act 1955*.

The delegate refused to grant the extension of time, finding that Neways, Inc. had not established special circumstances. The delegate noted that the applicant's statutory declaration provided only general assertions about the relevance of the evidence and attributed the delay to neglect by senior management due to internal changes, which did not meet the threshold for special circumstances as established in prior case law. Consequently, the delegate proceeded to hear the opposition on its merits. After comparing the trade marks, the delegate concluded that despite some similarities, the differences between the marks, particularly the presence of two heads in the applicant's mark versus one in the opponent's, and the distinct word elements, outweighed any potential for deception or confusion. The delegate found that Neways, Inc. had discharged its onus to show no reasonable likelihood of problems.

The opposition was dismissed, and the delegate directed that the application proceed to registration, awarding costs to the applicant.