A recent UK trade mark opposition by BeReal Wear Ltd against BeReal is, at its heart, a straightforward one involving identical or near identical marks and identical or highly similar goods in class 25, based on sections 5(1), 5(2)(a) and 5(2)(b) of the Trade Marks Act 1994.

Unsurprisingly, the Opponent succeeded on all grounds.

However, of most interest are the decisions not to consolidate this opposition with either of the two late-filed invalidity actions by the Applicant, and the impact these had on the status of this latest outcome. The Hearing Officer (HO) ended up not allowing consolidation. However, the HO did decide to make the resulting decision in the opposition – if successful – provisional pending the outcome of the invalidity action.

It is notable and perhaps a cause for concern that the HO felt compelled to make that provisional status conditional. The conditions: that written undertakings be given by the Applicant that the related action will be run both diligently and without unnecessary delays; and that if those undertakings were not given, then the decision in the opposition could be made a final one – even if the invalidity were still pending.

Ultimately, this is still a provisional decision and is suspended until the outcome of the current parallel invalidity action is known – at which stage a final decision will be issued, including considering costs.

Geoff Weller explains more in an article for CITMA. You can read the full article here.