Bentley Worldwide Shoes is the owner of Australian Trade Mark Registration No. 1055063 for UNDERGROUND.

Transport for London applied for the below mark and was opposed by Bentley.

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The Hearing Officer spent little time on sections 41, 42, 59 or 62.  More attention was paid to section 44 where Bentley was not able to convince the Hearing Officer that its ‘optical goods’ and ‘jewellery’ were not similar to the applicant’s ‘printed matter’ or ‘clothing’.

Finally, the opponent attempted to demonstrate that it had acquired a reputation in a composite trade mark that included the element ‘UNDERGROUND’ (shown below) in an effort to succeed under section 60.

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The opponent’s sales figures were ‘not significant’ and no evidence of advertising expenditure in Australia was supplied.  Accordingly, the Hearing Officer found that the opponent had not met the threshold of having acquired a reputation in order for section 60 to be considered.

To view the Office decision, click here.