Linguascope -and- Promethean Limited

Robert Onslow and Jessie Bowhill were recently on opposing sides before the Intellectual Property Office in invalidity proceedings involving word marks with a common prefix. The hearing officer held that although the cited marks formed a "family" of marks with a common prefix and differing suffixes, the descriptive nature of the prefixes meant that the family was denoted by the combination of the descriptive prefix and the conceptual link between the varying suffixes and not by the prefixes alone. The result was that the registered proprietor’s mark, although having a similar prefix, would not be taken to be a member of the family, by reason of the differing conceptual content of the suffix: ACTIVISCOPE/ACTIVBOARD.