Trade mark decision

BL Number
O/048/04
Decision date
23 February 2004
Hearing officer
Mr M Foley
Mark
BARNEYS
Classes
25
Applicant
Baisemark Ltd t/a Northern Suede & Leather
Opponent
Barney's Inc
Opposition
Sections 5(4)(a) & 32(2)(b)

Result

Section 5(4)(a): - Opposition failed.

Section 32(2)(b): - Opposition partially successful. Filing date amended.

Points Of Interest

  • 1. The opponent appealed to the Appointed Person. In his decision dated 10 July 2005 (BL O/226/05) the Appointed Person upheld the Hearing Officer's decision under Section 5(4)(a) and also his decision under Section 32(2)(b) with some observations.

Summary

When the application was first made, the applicants were listed as Northern Suede and Leather Ltd. Some eleven months after the original filing date the error was discovered and an application was made to the Registrar to correct the applicants' name to Baisemark Ltd t/a Northern Suede and Leather. This was agreed.

The opponents ground of objection under Section 32 was on the basis that the application had been incorrectly filed since the original applicants did not exist. The Hearing Officer considered the circumstance surrounding the application and the request to amend the applicants' name. He agreed that until the amendment was made the application was not in proper order and decided that the filing date should be amended to the date of the application to show the proper name of the applicant.

The Hearing Officer further decided that his change should not affect the evidence filed by the applicants to support a claim to "honest concurrent use" under Section 7 since that evidence had been properly filed and the applicants' name clearly identified. A request by the opponents to amend the grounds of opposition to include a ground relating to "well known marks" was refused since this option was available to the opponents at the outset of these proceedings.

The opponents claimed to have a well known retail outlet in the Madison Avenue area under the name BARNEY'S. They have several other outlets in the USA and Japan and claim to have traded since 1923. They claimed an international reputation; to sell goods via a website; to be well known and used by tourists to the USA and to have advertised in publications such as the New York Times which is available in the UK. Under Section 5(4)(a) - Passing Off - the Hearing Officer was not satisfied that the evidence filed showed that the name BARNEY'S was known by traders and consumers within the UK and there was no evidence from such groups filed in the proceedings. While the Hearing Officer accepted that it was likely that BARNEY'S had a reputation in the USA the opponents had not shown that such a reputation extended to the UK. Opposition thus failed on this ground.

Full decision O/048/04 PDF document33Kb