Trade mark decision

BL Number
O/032/04
Decision date
2 February 2004
Hearing officer
Mr M Foley
Mark
HOUSE DOCTOR
Classes
42
Applicant for Invalidity
Ann Maurice
Registered Proprietor
Smith & Paul Associates Limited
Invalidity
Section 47(1) & (2) based on Sections 3(6) & 5(4)(a)

Result

Section 47(1) & Section 3(6) - Invalidity action failed.

Section 47(2) & Section 5(4)(a) - Invalidity action successful

Points Of Interest

  • 1. The registered proprietor appealed to the Appointed Person. In his decision dated 5 August 2004 (BL O/242/04) the Appointed Person upheld the Hearing Officer’s decision and dismissed the appeal

Summary

The applicant for invalidity stated that she had presented a television program for Channel 5 with the title HOUSE DOCTOR in 1998. The programme gave advice to home owners on methods and means of improving their properties with a view to securing higher market sales values. As the presenter, the applicant said that she became known as the HOUSE DOCTOR. The programmes attracted an audience of up to a million. Further programmes after the relevant date were also presented by the applicant.

The registered proprietor had been engaged in Interior Design and on seeing the television programme thought that the title was an apt description of her activities. Before applying to register the mark in suit in 1999 she had contacted Channel 5 who had said they did not forsee any problem or conflict.

Under Section 5(4)(a) – Passing Off – the Hearing Officer reviewed the evidence surrounding the Channel 5 programmes and concluded that the title HOUSE DOCTOR was a distinctive mark in relation to the activities portrayed; also that the title had come to be associated with the applicant in that it brought celebrity status and reputation. She had therefore acquired a reputation and goodwill in the name HOUSE DOCTOR in relation to services the same or very similar as those of the registered proprietor. The applicant thus succeeded on the Section 5(4)(a) ground.

As regards the ground under Section 3(6), the Hearing Officer was satisfied that the registered proprietor had taken some care before filing her application in that she had contacted Channel 5. As he concluded that there had been no dishonesty the Hearing Officer dismissed the Section 3(6) ground.

Full decision O/032/04 PDF document35Kb