Digipos Store Solutions Group Ltd v Digi International Inc [2008] EWHC 3371 (Ch) (12 March 2008)

Digipos Store Solutions Group Ltd v Digi International Inc [2008] EWHC 3371 (Ch) (12 March 2008)

The Hearing Officer did undertake the required evaluation of the descriptiveness and distinctiveness of the DIGI mark, considered the evidence of third party use and state of the register, and was entitled to find that DIGI was distinctive in the context of the marks in question. No distinct and material error of principle was made, and the Hearing Officer's assessment was not plainly wrong. The appeal fails.

Citation
[2008] EWHC 3371 (Ch)
Parties
Appellant/applicant for Registration: Digipos Store Solutions Group Limited; Respondent/opponent: Digi International Inc.
Jurisdiction
England and Wales
Judgment Date
12 March 2008
Procedural Posture
Trade Mark Registration Appeal / Appeal From Registrar's Decision
Outcome
Appeal dismissed
Legal Topics
Distinctiveness of Trade Marks, Likelihood of Confusion, Scope of Protection for Descriptive Marks, Assessment of Consumer Perception
Intellectual Property Trade Marks Distinctiveness of Trade Marks Likelihood of Confusion Scope of Protection for Descriptive Marks Assessment of Consumer Perception

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 16 Party arguments 2
Sign in to unlock

Parties

Digipos Store Solutions Group Limited

Appellant/applicant for Registration

Digi International Inc.

Respondent/opponent

Procedural Posture

Trade Mark Registration Appeal / Appeal From Registrar's Decision

Legal Issues

  1. 1 Whether the Hearing Officer erred in assessing the distinctiveness of the DIGI mark
  2. 2 Whether the DIGI prefix is descriptive or distinctive in the context of digital/computer-related goods
  3. 3 Whether the scope of protection for the DIGI mark should be narrow due to its alleged descriptiveness

Ratio Decidendi

The Hearing Officer did undertake the required evaluation of the descriptiveness and distinctiveness of the DIGI mark, considered the evidence of third party use and state of the register, and was entitled to find that DIGI was distinctive in the context of the marks in question. No distinct and material error of principle was made, and the Hearing Officer's assessment was not plainly wrong. The appeal fails.

Court Disposition

Appeal dismissed

Orders

  • The Hearing Officer's decision is upheld
  • Opposition to registration succeeds under section 5(2)(b) of the Trade Marks Act 1994