Opposition by Kiss Nail Products Inc to registration of trade mark application number 2392866 (class 3) - KissT - in the name of Tracy Keevers

This matter concerned an opposition by Kiss Nail Products Inc. (the Opponent) to the registration of trade mark application number 2392866, comprising the mark "KissT" (the Trade Mark), filed by Tracy Keevers (the Applicant) in class 3. The decision was made by Tracey Berger, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the Trade Mark was deceptively similar to the Opponent's earlier registered trade mark, "KISS", for the purposes of section 44(1) of the relevant legislation. This required an assessment of the resemblance between the two marks, considering their appearance, sound, and the overall impression they would create on potential consumers, taking into account the doctrine of imperfect recollection.

The Hearing Officer reasoned that the Opponent's mark was entirely contained within the Trade Mark, creating an obvious degree of resemblance. The shared element "KISS" was considered the prefix of the Trade Mark and the beginning of a word, which is more significant for distinctiveness. While "KISS" might have some descriptive relevance to class 3 goods, it was deemed inherently distinctive in this context, with no evidence of common usage or lack of distinctiveness. The Hearing Officer found that the addition of the letter "T" to the Opponent's mark did not sufficiently alter the look, sound, or idea conveyed. Crucially, the Hearing Officer concluded that the final letter "T" in the Trade Mark could lead consumers to believe that the Applicant's products were a variation or different range of the Opponent's goods, causing them to wonder if the goods originated from the same trader or were connected to the Opponent. This led to a finding of a real, tangible danger of deception or confusion.

Accordingly, the Hearing Officer found that the Opponent had established a ground of opposition under section 44(1) and refused to register the Trade Mark. The Hearing Officer also awarded costs against the Applicant.